WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
M. & B. Marchi e Brevetti Srl Limited Liability Company v. Yang Guorui / Yang Guodong
Case No. D2012-2108
1. The Parties
The Complainant is M. & B. Marchi e Brevetti Srl Limited Liability Company of Fabriano, Italy, represented by Monica Stocco, Italy.
The Respondent is Yang Guorui / Yang Guodong of Beijing, China.
2. The Domain Names and Registrar
The disputed domain name <ariston-bj.com> is registered with Xin Net Technology Corp.
The disputed domain name <ariston-china.com> is registered with HooYoo Information Technology Co. Ltd.
The disputed domain names <ariston-bj.com> and <ariston-china.com> shall together be referred to as the “Domain Names”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2012. On October 24, 2012, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with <ariston-bj.com>. On October 25, 2012, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 24, 2012, the Center transmitted by email to HooYoo Information Technology Co. Ltd. a request for registrar verification in connection with <ariston-china.com>. On October 30, 2012, HooYoo Information Technology 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 October 30, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On November 6, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit its comments.
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 November 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2012.
The Center appointed Karen Fong as the sole panelist in this matter on December 7, 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 is the registered proprietor of the ARISTON trade marks in about 150 countries including China. The Complainant is responsible for managing the trade marks and domain names which are exploited by Ariston Thermo SpA and its subsidiaries (the “Group”) through various intellectual property licensing agreements.
Since the invention in 1908 of the world’s first gas-type water heaters, the Group has been committed to the research and development of all types of water heaters, and has produced electric water heaters, gas water heaters, heating boilers and solar water heaters as home water heating products for the global market. In 1995 the Group spent USD50 million to introduce into China the world’s leading water heater production equipment and technology, and established a large-scale automatic production site in Wuxi, Jiangsu. They now have five independent electric water heater production assembly line plants in China. As a consequence of its extensive presence in China, the Group’s Ariston brand has established a substantial reputation and goodwill in the country. In fact, in 2008 the Group was chosen as the thermal heating system supplier for the Beijing Olympics. Again, in 2009, the Group became the sole water heater supplier for the Shangai World Expo Village and in 2010, it was designated as the supplier for the Guangzhou Asian Games.
To date, the Complainant has over 70 registered trade marks in China, including ARISTON in Chinese and English text as well as a combination of the word marks and the ARISTON device. The Ariston trade marks registered in Class 11 include the following:
Chinese Trade mark no. 542414 – ARISTON and device, registered in 1991;
Chinese Trade mark no. 755354 – ARISTON and device and Chinese text, registered in 1995;
Chinese Trade mark no. 1255550 – ARISTON and device and Chinese text, registered in 1999;
Chinese Trade mark no. 6401427 – ARISTON and device and Chinese text, registered in 2010;
International Trade mark no. 706059 – ARISTON and device and Chinese text, registered in 1998; and
International Trademark no. 806222 – ARISTON and device, registered in 2003.
In addition the Complainant has registered several domain names, including, inter alia,
all of which link to the Group’s official websites to enable Internet users to access information regarding the Group and its products.
The Domain Names, <ariston-china.com> and <ariston-bj.com> were registered respectively on December 3, 2009 and March 3, 2009 and the Respondents are using the Domain Names to resolve to two practically identical websites bearing the ARISTON trade mark as well as the ARISTON device marks in which water heater repair and maintenance services for Ariston water heaters are being offered to consumers.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the ARISTON trade marks, the Respondents have no rights or legitimate interests with respect to the Domain Names and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names, all of which it believes are related and under management and control of a single owner/registrant.
The basis of the Complainant’s belief that the registrants are related and under management and control of a single owner/registrant are as follows:
1) Both the Domain Names consist of the word ARISTON followed by a dash and then a geographical indication “china” and “bj”, the latter being the abbreviation for Beijing;
2) Both the websites connected to the Domain Names offer the same services – Ariston water heater repair and maintenance services and the content of both websites are almost identical;
3) The WhoIs information for both Domain Names show that they were both updated on February 29, 2012;
4) The email address and “QQ” number at the bottom of the home page of both websites are identical.
5) At the bottom of the home page of the website connected to <ariston-china.com> is a link to
the website connected to <ariston-bj.com>;
6) At the bottom of the home page of the website connected to <ariston-bj.com> is a link to the website connected to <haier-china.net> which has the same registrant details as the Domain
Name <ariston-china.com>. This website has the same design and illustrations as the website connected to <ariston-china.com>;
7) The e-mail address “[…]@yahoo.cn” as stated in 4) above also appears on the websites connected to <guorui-china.com> and <guorui-china.cn>. The website connected to <guorui-china.cn> has a link to the website connected to <ariston-bj.com>;
8) The registrant details of the domain name <guorui-china.com> are the same as that for <ariston-china.com>.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and is being used in bad faith.
B. Preliminary Procedural Issues
(i) Consolidation of Proceedings
Paragraph 4(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings BV v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. 2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondent’s cases and extracted the following general principles:
1. Consolidation of multiples registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.
2. The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, each of the Domain Names incorporates the Complainant’s well-known ARISTON mark in its entirety. The Complainants’ submissions and supporting evidence summarized in paragraph 5A above demonstrates that prima facie the Domain Names are subject to common control. The Respondents had the opportunity but did not respond substantively to the Complaint.
Accordingly, applying the principles in Speedo Holdings BV v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. 2010-0281 to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to the common ownership or control of either Yang Guorui or Yang Guodong. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules. Accordingly, the Panel will address the registrants of the Domain Names as a single collective “Respondent” in the following discussion.
(ii) Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from both the registrars, the language of the registration agreement for the Domain Names is Chinese.
The Complainant submits in section IV of the Complaint that the language of the proceeding should be English. The Complainant contends that the Respondent has knowledge of the English language as some words on the websites connected to the Domain Names are in English and one of the Domain Names utilises the English word “China”.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceeding by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the name ARISTON through use and registration that predates the Domain Names.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case, the Complainant’s registered trade mark ARISTON is the dominant portion of the Domain Names with the addition of the geographical terms, “china” and “bj” and the generic “.com” domain suffix. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix. Further, the addition of the geographical terms “china” and “bj” do not negate the confusing similarity encouraged by the Respondent’s complete integration of the ARISTON trade mark in the Domain Names. E.g. N.V. Organon Corp. V. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org WIPO Case No. D2011-0260; Oakley, Inc. V. Wu bingjie aka bingjie we/ Whois Privacy Protection Service WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic WIPO Case No. D2010-0207.
The Panel finds that the Domain Names are confusingly similar to the ARISTON trade mark of the Complainant, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.
D. Rights or Legitimate Interests
The Complainant alleges that it has not licensed, consented or otherwise authorized the Respondent to use its ARISTON trade mark in the Domain Names or in any other manner. On both websites connected to the Domain Names, the Respondent is offering repair and maintenance services in connection with ARISTON water heaters. The consensus view under paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) says:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
In this case, there is nothing on the websites connected to the Domain Names explaining the relationship between the Complainant and the Respondent. It seems to this Panel that the content of both websites is intended to mislead Internet users to believe that there is a connection between the Complainant and the Respondent. In the “About Us” section on the website at <ariston-china.com> and the “Company Profile” section at <ariston-bj.com>, the information presented is about the Group and their activities in the water heating business, giving the impression that the owner of the websites is connected to the Group. The Panel finds the Oki Data principles for the rights or legitimate interests are not satisfied in this case. The Panel also takes the view as stated in the WIPO Overview 2.0 “… that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark.”
This is such a case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
E. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s ARISTON trade marks when it registered the Domain Names. The fact that the Domain Names incorporate the Complainant’s well-known trade mark in its entirety and the Respondent is purporting to be a repair and maintenance centre for ARISTON goods although it has no rights or legitimate interests in the Domain Names, in the Panel’s view, evidence that the registration of the Domain Names was in bad faith.
The Panel also concludes that the actual use of the Domain Names was in bad faith. The use of the Complainant’s trade mark as the dominant part of the Domain Names is intended to capture Internet traffic from Internet users who are looking for the Complainant’s products and services connected with such products. The Domain Names and the content of the websites are calculated to confuse Internet users that the Respondent is an authorised repairer of the Complainant’s goods when this is not the case. This shows a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s websites and the products sold on them were authorised or endorsed by the Complainant.
The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Names are in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <ariston-bj.com> and <ariston-china.com> be transferred to the Complainant.
Date: December 28, 2012