WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PrimeSense Ltd. v. rui zhu a.k.a zhurui
Case No. D2011-1200
1. The Parties
The Complainant is PrimeSense Ltd. of Tel Aviv, Israel, represented by Meitar, Liquornik, Geva & Leshem Brandwein, Adv., Israel.
The Respondent is rui zhu a.k.a zhurui of Shenyangshi, Liaoning, China.
2. The Domain Name and Registrar
The disputed domain name <primesense.org> (the “Disputed Domain Name”) is registered with HiChina Zhicheng Technology Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2011. On July 14, 2011, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the Disputed Domain Name. On July 15, 2011, 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 18, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 21, 2011, the Complainant submitted a 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 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 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2011. The Response was filed with the Center on August 10, 2011.
The Center appointed Kar Liang Soh as the sole panelist in this matter on August 19, 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 provider of 3D vision sensing and capturing technology under the trade mark PRIMESENSE. The Complainant has over 180 employees and consultants around in the world (including in China).
The Complainant has been using the mark PRIMESENSE since 2005 and owns the following trade mark registrations for PRIMESENSE:
Jurisdiction Trade Mark Number Registration Date
United States 77968290 March 25, 2010
CTM 009348939 February 18, 2011
The Complainant also owns CTM registration number 009370131 (applied for on September 13, 2010, registered on February 25, 2011) for the following logo (the “Logo”):
The Complainant’s operations in China began in 2008, with manufacturing activities since 2009. The Complainant also registered the domain name <primesense.com> on November 8, 2005.
The Respondent is an individual working in the industry of aluminum alloys. The Respondent registered the Disputed Domain Name on February 20, 2011. The Complainant became aware of the Disputed Domain Name in March 2011 and sent the Respondent 2 cease and desist letters on April 4, 2011 and May 17, 2011 respectively. The first letter was sent by email. The Complainant’s attempts to send the second letter by email and facsimile transmission using the contact details associated with the WhoIs record of the Disputed Domain Name were not successful. The Respondent did not reply to either letter.
The Disputed Domain Name resolved to a website at “www.primesense.org” which is substantially in Chinese. Before or at the time of the Complaint, the website contained the following features:
the word “PrimeSense” and the Logo were displayed prominently on the website;
it described the website as one providing reports, techniques and information relating to PrimeSense products;
the “contact us” page provided the contact details of “Rick Yu”, an employee of the Complainant, together with the contact details of persons named 朱睿 (Zhu Rui, the Respondent) ([…]@5miss.com) and 朱晓航 (Zhu Xiaohang).
the “about us” page refers to “www.primesense.com” as the official website, followed by “www.primsense.org” as the Chinese website.
5. Parties’ Contentions
The Complainant contends that:
(a) The Disputed Domain Name is identical to the Complainant’s trade mark PRIMESENSE;
(b) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has no connection with the Complainant and the Complainant has not authorized or licensed the Respondent to use the trade mark PRIMESENSE and the Logo. The use of the Complainant’s trade mark by the Respondent is not legitimate use. The Respondent has never been commonly known by the name “PrimeSense”. Searches of the trade mark databases of the United States of America, European Union, China and Madrid International Trademark Registration System do not reveal any trade mark associated with the Respondent; and
(c) The Disputed Domain Name was registered and is being used in bad faith. The Complainant is well-known internationally. The Respondent was using the Disputed Domain Name to internationally attract, for commercial gain, Internet users to the Respondents’ 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 or products or services on the Respondent website. The Respondent has actual knowledge of the Complainant’s rights. The Respondent was holding out as an agent or affiliate of the Complainant.
The Response referred to the Respondent as the holder/user of the Disputed Domain Name while identified another individual, 徐巍 (Xu Wei), as the actual registrant (hereinafter “the Registrant”). The Response contends that:
(a) The Registrant is an individual and not a commercial entity. The Registrant is involved in the aluminium-alloy industry which is not the same industry as that associated with the Complainant;
(b) The Respondent and the Registrant were not aware of the association of Primesense with a registered company, and the Registrant was under the mistaken impression that “Primesense” referred to a technology. The Registrant registered the Disputed Domain Name for the purpose of encouraging discussion among technology lovers and Internet users and the Respondent has been doing so since February 2011; and
(c) The Respondent and the Registrant have never been in contact with the Complainant and the Complainant’s employees. They were not aware that Primesense was an internationally well-known company at the time of registering the Disputed Domain Name. They have no commercial intentions in relation to the Disputed Domain Name and have not offered the Disputed Domain Name for sale at a high price to acquire illegitimate gains.
6. Discussion and Findings
The registration agreement was in Chinese. As such, the default language of the proceeding is Chinese. The Complainant has requested that English be the language of the proceeding. Based on the following reasons and pursuant to the paragraph 10 of the Rules, the Panel determines that English shall be the language of the proceeding:
(1) The Complainant is an Israeli entity and is not in a position to conduct the proceeding in Chinese without a great deal of additional expense and delay;
(2) The Complainant conducts its business dealings, including in China, in English. The Complainant does not understand Chinese;
(3) The Respondent did not object to the Complainant’s request that English be the language of the proceeding and promptly filed the Response seemingly without any difficulty with the language of the Complaint,;
(4) Since both the Complaint and the Response have been filed, there is no meaningful benefit to be gained by forcing the Complainant to endure the one-sided hardship of being burdened with Chinese as the language of the proceeding; and
(5) The Panel is conversant in both Chinese and English.
The Panel accordingly proceeds to review the Complaint and the Response in their respective languages to determine the dispute in English and consider whether the Complainant has successfully establish the three limbs of paragraph 4(a) of the Policy, namely:
(a) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(c) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
By virtue of the trade mark registrations for PRIMESENSE, the Complainant clearly has rights in the trade mark PRIMESENSE. The Disputed Domain Name incorporates the word “PrimeSense” solely and in its entirety. Therefore, there is no doubt to the Panel that the Disputed Domain Name is identical or confusingly similar to the trade mark PRIMESENSE within the meaning of the first limb of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has confirmed that the Respondent has not been authorized by the Complainant to use the trade mark PRIMESENSE. The Respondent also admitted that it had no prior contact with the Complainant. Based on the available evidence, the Panel accepts that the Respondent is not commonly known by the name “PrimeSense”. The Respondent appears to be is an individual named “Zhu Rui” or “Rui Zhu”.
In the usual manner of proceedings under the Policy, a complainant only needs to show a prima facie case that the respondent does not have any rights or legitimate interests in respect of a disputed domain name. Once that is done, the burden of showing that the respondent has rights or legitimate interests shifts to the respondent. The Panel accepts that the Complainant has established such a prima facie case on the evidence.
It is unclear from the available evidence what the relationship between the Registrant and the Respondent may be. The Registrant claimed to have selected the Disputed Domain Name on a mistaken impression that Primesense referred to a technology. No mention is made of the Respondent’s role in the selection of the Disputed Domain Name and the Panel can only assume that the Respondent was not involved at all. Further, neither the Registrant nor the Respondent claimed any rights or legitimate interests in relation to the Disputed Domain Name. In the circumstances, and having regard also to the Panel’s discussion below of the issue of bad faith, the Respondent has failed to rebut the prima facie case established by the Complainant and the Panel finds for the Complainant in relation to the second limb of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Although the Complainant has asserted that PRIMESENSE is a well-known mark, the available evidence does not permit the Panel to make a determination in this regard.
Nevertheless, the content of the website resolved from the Disputed Domain Name indicates that the Respondent was aware of the trade mark PRIMESENSE, the Complainant and the Complainant’s products. The Disputed Domain Name was registered some years after PRIMESENSE was first used and/or registered as a trade mark, the contention that the Registrant and the Respondent were ignorant of the Complainant and the trade mark PRIMESENSE holds little water. The website displays the trade mark PRIMESENSE and the Logo prominently. The website purposed itself as specifically providing a forum for news, discussion, information and techniques on the use of PrimeSense products.
Further, the Respondent went beyond simple use of the trade mark PRIMESENSE and the Logo. The artful reference to the Complainant’s website at “www.primesense.com” as the “official website” and the Respondent’s website at “www.primesense.org” as the “Chinese website” next to each other leaves little to the imagination that the Respondent’s website is principally being held out as being affiliated and/or endorsed by the Complainant. The potential for such misrepresentation is cemented by the identification of “Rick Yu” and his contact particulars on the Respondent’s website and contradicts the Registrant’s and the Respondent’s assertion of ignorance of the Complainant.
On balance, the circumstances overall lead the Panel to conclude that the Respondent, by using the Disputed Domain Name, has intentionally attempted to attract 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 website or of products or services on the website. Should it be shown that the Respondent has intentionally attempted to attract Internet users for commercial gain, the facts would fall squarely within the specified instance of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
There is insufficient evidence before the Panel to determine whether the Respondent has intentionally attempted to attract Internet users with an objective of commercial gain. Be that as it may, paragraph 4(b)(iv) of the Policy is but only an example of bad faith registration and use. It is a consensus view of past WIPO UDRP panels that paragraph 4(b) of the Policy does not represent an exhaustive definition of bad faith registration and use under the Policy. For example, bad faith registration and use may exist in the form of passive holding (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) or opportunistic bad faith (e.g., RapidShare AG, Christian Schmid v. Liao Fei aka Fei Liao, WIPO Case No. D2010-0600).
By requiring a respondent to have intentionally attempted to attract Internet users for commercial gain, paragraph 4(a)(iv) of the Policy is clearly directed at a respondent who creates a likelihood of confusion with a trade mark for the purpose of gaining a personal benefit. Whether any personal benefit in fact materializes does not appear to affect the analysis. The key question is whether the respondent is riding on the trade mark by creating a likelihood of confusion.
In the present circumstances, the manner in which the Respondent has insinuated the website resolved from the Disputed Domain Name as a website affiliated with the Complainant’s website can hardly be considered innocent. The liberal use of the Complainant’s trade mark PRIMESENSE and the Logo, the co-location of references to the Complainant’s official website and the Respondent’s website, and the provision of contact particulars of the Complainant’s employee alongside the Respondent’s contacts make up a deliberate recipe for misrepresentation which encourages a likelihood of confusion with the Complainant’s trade mark PRIMESENSE. Even if the Panel accepts the Respondent’s claim that he/she has no intention to sell the Disputed Domain Name at a high price, it is inconceivable to the Panel that the Respondent does not have some commercial or personal gain in mind.
In addition, the Respondent has deliberately used fictitious and/or ineffective contact particulars to register the Disputed Domain Name without any valid reason. This is further complicated by the ambiguous relationship between the Respondent and the Registrant. The Registrant appears to be the individual responsible for selection and registration of the Disputed Domain Name while the Respondent is referred to as only a user. The Registrant does not appear to be an agent and seems to have significant control of and influence over the Disputed Domain Name. Despite the apparently significant role played by the Registrant in selecting and registering the Disputed Domain Name, his/her identity had remained hidden until disclosed in the Response. The Panel finds the situation highly suspicious. In the Panel’s assessment, the circumstances point to a strong likelihood that the Registrant and the Respondent have failed to discharge the duty of honesty discussed in many past panel decisions (e.g., Luxottica Group S.p.A., Luxottica Fashion Brillen Vertriebs GmbH v. Rett Walters, WIPO Case No. D2011-0297; ECCO Sko A/S v. Protected Domain Services Customer ID: NCR-2448048 / jizhiteam, WIPO Case No. D2010-1113; Farouk Systems Inc. v. David, WIPO Case No. D2009-1245). The failure to discharge such a duty supports a finding of bad faith. Taking all the factors highlighted above into consideration, the Panel is of the view that the Disputed Domain Name was registered and is being used in bad faith by the Respondent.
The Complainant also referred to paragraph 4(b)(iii) of the Policy claimed in the Complaint. Although registration of the Disputed Domain Name and the Respondent’s website is likely to cause confusion to consumers and thereby cause some disruption to the Complainant’s business, the Panel is not convinced on the available evidence that the Complainant and the Respondent are competitors and the registration of the Disputed Domain Name was primarily for the purpose of disrupting the Complainant’s business.
The Complainant has argued that the term “competitor” in paragraph 4(b)(iii) of the Policy should be given a broad meaning without being restricted to a business or commercial competitor. In support, the Complainant referred to a line of panel decisions which developed the principle that a “competitor” may include a person who acts in opposition to the complainant (i.e., The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571; Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869; Mission KwaSizabantu v Benjamin Rost, WIPO Case No. D2000-0279). It is important to understand that these cases are limited by the context of an opponent who acted in opposition to another, that is, a respondent with a mission to paint a complainant in a negative light. The Panel is unable to see how the principle applies to the present case. The evidence does not show that the Respondent is actively opposing the Complainant in any identifiable manner. Regardless, since the Panel has already determined that the Disputed Domain Name was registered and is being used in bad faith, it is not necessary for the Panel to make any specific finding in relation to paragraph 4(b)(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, <primesense.org>, be transferred to the Complainant.
Kar Liang Soh
Dated: September 12, 2011