WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HAZET-WERK Hermann Zerver GmbH & Co. KG v. wilhelm jacobus izak
Case No. D2011-0040
1. The Parties
The Complainant is HAZET-WERK Hermann Zerver GmbH & Co. KG of Remscheid, Germany, represented by Bockermann, Ksoll, Griepenstroh, Germany.
The Respondent is wilhelm jacobus izak of Guangzhou, Guangdong Province, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <hzkraft.com> is registered with Xin Net Technology Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2011. On January 7, 2011, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On January 10, 2011, Xin Net Technology Corp. 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 January 12, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On January 12, 2011, the Center also transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On January 14, 2011, the Complainant filed an amended Complaint and confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center has verified that the Complaint together with the amended Complaint satisfy 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 proceeding commenced on January 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 7, 2011. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on February 8, 2011.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 10, 2011. 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 company incorporated in Germany and the owner of an international and a German national registration for the trade mark HAZET, registered in respect of goods including tools, common metals, ironmongery, locks and fittings (the “Trade Mark”).
The Respondent is an individual apparently with an address in China.
The disputed domain name was registered on October 20, 2010.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The disputed domain name is confusingly similar to the Trade Mark.
The Respondent is using the disputed domain name in respect of a website offering for sale mechanical tools and tool carts (the “Website”). The Trade Mark is well-known worldwide for high quality professional tools. The Respondent is seeking to trade off the Complainant’s reputation in the Trade Mark, including by offering for sale on the Website mechanical tool products using the same turquoise colour used by the Complainant since 1868.
The disputed domain name was registered by the Respondent primarily to conduct an online business via the Website offering for sale products that are identical and/or confusingly similar to the products of the Complainant.
The disputed domain name is phonetically identical to the “Hazet Kraft” products of the Complainant featured on the Complainant’s “www.hazet.com” and “www.hazet.de” websites (the “Complainant’s Websites”).
The toolcarts offered for sale on the Website are identical to the toolcarts manufactured by the Complainant and offered for sale on the Complainant’s Websites, in respect of which toolcarts the Complainant possesses intellectual property, trade mark and design rights. Furthermore, the picture of the Respondent’s toolcarts featured on the Website was copied from the picture of the Complainant’s toolcarts on the Complainant’s Websites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co.ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Complainant is a German corporation;
(2) The products offered for sale on the Website are done so in English, German, Dutch and French;
(3) The address of the Respondent on the Website is an address in Switzerland;
(4) The disputed domain name uses English language spelling.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant in the English language (Finter Bank Zurich v. Shumin Peng, supra), in particular the fact the Website is in English, German, Dutch and French (and not in Chinese).
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding.
B. Identical or Confusingly Similar
UDRP panels have consistently held that a domain name is identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
In the present case, the disputed domain name does not include the Trade Mark in its entirety. Although the disputed domain name contains the letters “hz” which could perhaps be considered as an abbreviation of the Trade Mark, the Panel is not convinced that the disputed domain name in its entirety is confusingly similar to the Trade Mark, either visually, phonetically or in meaning. See Viacom International, Inc. (“Viacom”) v. na, Max Crossan and Max Fret, WIPO Case No. D2008-2003 and Merry Maids, Inc., ServiceMaster Brands, L.L.C v. Mary’s Maid to Order, WIPO Case No. D2007-1283.
The Complainant asserts that the disputed domain name is phonetically identical to the “Hazet Kraft” products of the Complainant featured on the Complainant’s Websites. The Complainant does not however assert any trade mark rights (registered or otherwise) in respect of the term “Hazet Kraft”. Having carefully reviewed the print-outs from the Complainant’s Websites annexed to the Complaint, the Panel was unable to find any examples of use by the Complainant of the term “Hazet Kraft” (whether as a trade mark, or otherwise) sufficient to enable the Panel to find rights in that term for the purpose of the present Policy proceedings.
In all the circumstances, the Panel finds that the disputed domain name does not contain the Trade Mark or a confusingly similar approximation of the Trade Mark and therefore it is not identical or confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint had failed to fufill the first condition of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
As the Complainant has failed to fulfill the first limb of paragraph 4(a) of the Policy, it is not strictly necessary for the Panel to make any findings in respect of the second and third limbs of the Policy, namely, whether the Respondent has no rights or legitimate interests in respect of the disputed domain name, and whether the disputed domain name was registered and is being used in bad faith.
The Panel does not therefore make any findings in respect of the second and third limbs of the Policy. The Panel would however comment, in respect of the Complainant’s submissions in this regard, that:
1. The Website does not appear to use the colour turquoise used on the Complainant’s Websites (and in respect of which the Complainant has asserted use since 1868, although without providing any evidence in support of such use). Rather, its colour scheme is navy blue and black;
2. Although the Website appears to offer for sale the same goods as the Complainant, that in itself is not enough to establish registration and use in bad faith;
3. The Complainant did not file any evidence to support its assertion of intellectual property, design and trade mark rights in its toolcarts;
4. Although the depiction of the Respondent’s toolcarts on the Website is very similar to the depiction of the Complainant’s toolcarts on the Complainant’s Website, and may well have been copied from the Complainant’s Website (although this is not entirely clear from reviewing the images on the respective websites), it does not feature the Trade Mark. Therefore, absent concrete evidence of any design or other intellectual property rights in respect of the Complainant’s toolcarts, whether such images are infringing is open to debate. The Complainant’s registrations for the Trade Mark do not appear to cover “toolcarts”. Further, the Panel notes the Complainant has not, for example, asserted nor provided evidence in respect of any copyright rights in respect of the images of its toolcarts featured on the Complainant’s Websites.
For all the foregoing reasons, the Complaint is denied.
Sebastian M.W. Hughes
Dated: February 17, 2011