WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Palfinger AG v. changshaxiushijiewangluojishuyouxiangongsi

Case No. D2012-0991

1. The Parties

The Complainant is Palfinger AG of Salzburg, Austria, represented by DLA Piper Weiss-Tessbach Rechtsanwalte GmbH, Austria.

The Respondent is changshaxiushijiewangluojishuyouxiangongsi of Changsha, Hunan, China, represented by Jiangsu Hezhou Law Firm, China.

2. The Domain Name and Registrar

The disputed domain name <sanypalfinger.com> is registered with Hangzhou AiMing Network Co., LTD.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2012. On May 10, 2012, the Center transmitted by email to Hangzhou AiMing Network Co., LTD. a request for registrar verification in connection with the disputed domain name. On May 11, 2012, Hangzhou AiMing Network Co., 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 May 11, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On May 14, 2012, the Complainant confirmed its request that English be the language of the proceeding. Also on May 14, 2012, the Respondent submitted a request that the language of the proceeding be Chinese.

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 May 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2012. The Response was filed with the Center on June 4, 2012.

On June 4, 2012, the Center received the Complainant’s email communication, requesting the language of the proceeding be English. On June 5, 2012, the Respondent objected the Complainant’s above request, and requested the language of the proceeding be Chinese.

The Center appointed Jonathan Agmon as the sole panelist in this matter on June 14, 2012. 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, Palfinger AG is an Austrian founded company. The Complainant has for many years been among the leading international manufacturers of hydraulic lifting, loading and handling systems in the line of commercial vehicles and ships. The Complainant uses the mark PALFINGER, among others, for a truck mounted knuckle-boom crane.

The Complainant has a market share of more than 30 percent in its field of business.

The Complainant is the owner of numerous worldwide trademark registrations for the mark PALFINGER. For example: United States trademark registration No. 1321474 – PALFINGER, with the registration date of February 19, 1985; International trademark registration No. 721163 - PALFINGER, with the registration date of September 8, 1999, designated, among others to China, Russian Federation and Poland; Community trademark registration No. 32995 – PALFINGER, with the registration date of December 2, 1997; Israeli trademark registration No. 127883 – PALFINGER, with the registration date of March 5, 2000, and many others.

The Complainant engaged in a joint venture with Sany Heavy Industry ("Sany"), which is a leading company in the field of cranes and other construction machines. Sany owns multiple trademark registration for the mark SANY.

The disputed domain name <sanypalfinger.com> was registered on February 28, 2012.

The disputed domain name <sanypalfinger.com> resolves to an inactive page displaying an error message.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name infringes both the trademark of the Complainant and the trademark of Sany and confuses customers to believe that the website under the disputed domain name is the official website of the Complainant's and Sany's joint venture.

The Complainant further argues that the Respondent is not known by the disputed domain name and has not acquired any rights in it.

The Complainant further argues that the Respondent has not used and there is no evidence of preparation to use the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant further argues that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, since it does not make any use of the disputed domain name.

The Complainant further argues that the Complainant and Sany have published their joint venture by countless of press releases.

The Complainant further argues that the Respondent registered the disputed domain name for the purpose of selling, renting, or otherwise transferring it to the Complainant or to Sany or to a competitor of the Complainant.

The Complainant further argues that the Respondent registered the disputed domain name in order to prevent the Complainant or Sany from reflecting their marks in a corresponding domain name with respect to their joint venture.

For all the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent first argues that it is not a cyber squatter and has no background of cybersquatting.

The Respondent further argues that the Complainant is only known in the heavy machinery industry. The Respondent, as a sales person of consumer goods, had no knowledge of the Complainant until this proceeding.

The Respondent further argues that it did not register the disputed domain name in bad faith. The Respondent contends that it did not sell or allowed others to sell the disputed domain name.

The Respondent further argues that it intends to market a product under the name “Sanypal” relating to manicure, pedicure and nail polish, in which it has been practicing for the past 3 years and has attained a certain level of business and filed to register a company named “湖南秀世界美甲有限公司” (“Hunan Xiu Shi Jie Nail Polishing Ltd., Co.”) for its business.

The Respondent further argues that when it was ready to begin sales of its products online, it learned that the name “Sanypal” was already registered under the gTLD “.com”. Since the domain name <sanypal.com> was already taken, the Respondent decided to register the disputed domain name instead.

The Respondent finally states that since the Complainant failed to show all the required elements of paragraph 4(a) of the Policy, the Complaint should be denied.

For all the above reasons, the Respondent requests that the Complaint be dismissed.

6. Discussion and Findings

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by 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, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of the proceeding be English.

The Respondent requested that the language of the proceeding be Chinese.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

As a general rule, complaints should be in the language of the registration agreement or where there are mitigating factors in a language in which a respondent is known to be proficient, and that neither party should use the language requirement for other purposes (General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi WIPO Case No. D2007-0645). Having read the Complaint and the Response, the Panel is satisfied that the Respondent has understood the Complaint sufficiently and that no injustice has been caused by the processing of the Complaint in English and the Response in Chinese.

Accordingly, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and Chinese and for its decision to be rendered in English.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The Complainant owns multiple worldwide trademark registrations for the mark PALFINGER. For example: United States trademark registration No. 1321474 – PALFINGER, with the registration date of February 19, 1985; International trademark registration No. 721163 - PALFINGER, with the registration date of September 8, 1999, designated, among others to China, Russian Federation and Poland; Community trademark registration No. 32995 – PALFINGER, with the registration date of December 2, 1997; Israeli trademark registration No. 127883 – PALFINGER, with the registration date of March 5, 2000, and many others.

The disputed domain name <sanypalfinger.com> integrates the Complainant PALFINGER trademark in its entirety.

The disputed domain name differs from the PALFINGER trademark by the additional mark SANY and the gTLD suffix “.com”.

The mark SANY is a registered trademark, owned by a third party.

UDRP panels have consistently found that the addition of a third party trademark to a domain name does not eliminate the visual impression that the domain name is confusingly similar with the complainant’s trademark (see F. Hoffmann-La Roche AG v. Bob, WIPO Case No. D2006-0751, Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793 and Hofmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793).

This is especially true since the Complainant has engaged in a joint venture with the third party and they publicly use the combination of their marks to promote the venture. Moreover, under such circumstances, it is clear that the disputed domain name consisting of both marks is likely to be associated with the venture itself, and thus to the Complainant.

The addition of the gTLD suffix “.com” to the disputed domain name does not avoid confusing similarity (see, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the gTLD suffix “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.

Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate Interests in respect of the disputed domain name.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the PALFINGER trademark, or a variation thereof.

The Respondent contended that it intends to market nail polish products under the mark SANYPAL. However, the Respondent did not provide any evidence to support its claim that it was or is known by the disputed domain name. In effect, the Respondent provided no evidence whatsoever apart from its statement in its Response. Moreover, the argument made by the Respondent that because the name “Sanypal” was not available under the “.com” gTLD he chose the disputed domain name is unpersuasive. The Respondent failed to explain why instead of his chosen name “Sanypal” he decided to choose the disputed domain name instead. Furthermore, the disputed domain name consists of the term "Sanypalfinger" and not "Sanypal".

Accordingly, the Respondent failed to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the PALFINGER trademark at least since the year 1985. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Incv. Triple E Holdings Limited, WIPO Case No. D2006-1095).

The Respondent's use of a highly distinctive trademark of the Complainant and of a third party mark (associated with the Complainant) also suggests bad faith on the part of the Respondent. It has been held in UDRP decisions that it is presumptive that using a highly distinctive trademark with longstanding reputation is intended to make an impression of an association with the Complainant. (See Danfoss A/S v. d7r9e1a1m/淄博丹佛斯测控仪表有限公司, WIPO Case No. D2007-0934, stating that: “the Panel finds that the DANFOSS trade mark, being a highly distinctive trade mark of a longstanding reputation, is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.” Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. As previously mentioned, the Panel finds the Respondent’s explanation of its choice in the disputed domain name to be unpersuasive. Furthermore, the Panel finds the Respondent’s argument that it had no knowledge of the Complainant until this proceeding also to be unpersuasive.

Also, the Respondent claims that the fact that it did not sell or allow others to sell the disputed domain name demonstrates its good faith in registering the disputed domain name. The Panel does not find this claim to be persuasive. The disputed domain name does not resolve to an active website. It is concluded from the evidence of the Complainant, that the Respondent registered the disputed domain name, but has not put it to any use. It has been held in UDRP decisions that passive holding of domain names can, under certain circumstances, be considered bad faith use of the domain name (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393).

In the present case, taking into consideration the goodwill the Complainant has achieved in the trademark, which is neither a common noun, nor a common name and the fact that the disputed domain name incorporated the Complainant's trademark as a whole, as well as a distinctive trademark of a third party (associated with the Complainant), it is determined by the Panel that the passive holding by the Respondent is considered bad faith.

This finding is also made in view of the fact that the Respondent failed to provide a reasonable justification for choosing the disputed domain name when the name he intended to use “Sanypal” was not available under the “.com” gTLD, and that the Respondent failed to provide any evidence supporting its argument that it intends to use the disputed domain name.

The Panel notes that failure to provide evidence which would support the arguments made by the Respondent can serve against the Respondent. This is because this Panel assumes that if the Respondent had such evidence, it would have timely furnished them.

Based on the evidence presented to the Panel, including the late registration of the disputed domain name and the distinctiveness of the Complainant's trademark, the passive holding by the Respondent, the lack of any feasible justification for registration of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <sanypalfinger.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Dated: July 2, 2012