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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BlueScope Steel Limited v. Weiping Zheng, weipingzheng

Case No. D2013-1910

1. The Parties

Complainant is BlueScope Steel Limited of Melbourne, Victoria, Australia, represented by Davies Collison Cave, Australia.

Respondents are Weiping Zheng and weipingzheng of Xiamen and Shamen, Fujian Province, China.

2. The Domain Names and Registrars

The first disputed domain name <bluescopezacs.com> is registered with GoDaddy.com, LLC. The second disputed domain name <bluescope-zacs.com> is registered with Guangdong JinWanBang Technology Investment Co., Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2013. On November 11, 2013, the Center transmitted by email to Guangdong JinWanBang Technology Investment Co., Ltd. and GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain names. On November 11, 2013, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that Weiping Zheng is listed as the registrant for the disputed domain name <bluescopezacs.com> and providing the contact details. On November 14, 2013, Guangdong JinWanBang Technology Investment Co., Ltd. transmitted by email to the Center its verification response confirming that weipingzheng is listed as the registrant for the disputed domain name <bluescope-zacs.com> and providing the contact details.

On November 14, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 15, 2013, Complainant confirmed its request that English be the language of the proceeding. Respondents 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 Respondents of the Complaint in both Chinese and English, and the proceedings commenced on November 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2013. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on December 11, 2013.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on December 31, 2013. 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

Complainant BlueScope Steel Limited bases its Complaint on its ownership of the marks BLUESCOPE, ZACS and BLUESCOPE ZACS (hereinafter “the BLUESCOPE marks”) in countries throughout the world including China. Complainant has provided copies of its trademark registrations in Annexes 17, 18, and 19 to its Complaint. Complainant further bases its Complaint on its common law trademark rights in its BLUESCOPE and ZACS marks. Still further, Complainant is the registered owner of at least 38 domain names, including <bluescope.com> that was registered on January 8, 2000, as well as <bluescope.com.cn> and <bluescopsteel.com.cn>.

Complainant is a company registered in Australia under the name BlueScope Steel Limited. Complainant has been incorporated since March 15, 1921, has been listed on the Australian Stock Exchange since July 15, 2002, and has carried on business under the name BlueScope Steel Limited since November 17, 2003. The Complainant is an international steel solutions company with a manufacturing and marketing footprint in Australia, New Zealand, China, Asia and North America. Complainant submits that it specializes in the production of flat steel building products and that its principal customers are in the building and construction, automotive, packaging and general manufacturing industries. Further, Complainant's steel rolling, coating and painting plants are located in Australia, New Zealand, Thailand, Malaysia, Indonesia, Viet Nam, India and China. The Panel accepts that the BLUESCOPE marks are well-known trademarks.

Respondents are Weiping Zheng and weipingzheng of Xiamen and Shamen, Fujian Province, China. Complainant submits that there is strong circumstantial evidence that first and second Respondents are the same or are closely connected. The names Weiping Zheng and weipingzheng, are each pinyin transliteration of Chinese characters representing the feminine first name Weiping, of persons with the surname Zheng. Further, the addresses of Respondents are within the same city, as the words Xiamen and Shamen are transliterations of the same city name. The Panel accepts that Respondents are the same or closely connected. The disputed domain names were registered on successive days, the first disputed domain name on September 29, 2013 and the second disputed domain name on September 30, 2013.

Hereinafter first Respondent and second Respondent will be referred to jointly and severally as “the Respondents” except where it is necessary to distinguish between them. Likewise, the first disputed domain name and the second disputed domain name will be referred to jointly and severally as “the disputed domain names” except where it is necessary to distinguish between them.

5. Parties’ Contentions

A. Complainant

The disputed domain names are confusingly similar to Complainant’s BLUESCOPE marks. Respondents have no rights to or legitimate interests in the disputed domain names. Respondents registered and are using the disputed domain names in bad faith.

B. Respondents

Respondents did not reply to Complainant’s contentions.

6. Discussion and Findings

Language of the Proceeding

The language of the Registration Agreement for the first disputed domain name <bluescopezacs.com> is English. The language of the Registration Agreement for the second disputed domain name <bluescope-zacs.com> is Chinese. The Complainant requested the language of the proceeding be English principally on the ground that the second disputed domain name <bluescope-zacs.com> resolved to a webpage that was written solely in English and the second Respondent communicated with Complainant in English.

In the circumstances of this case, and taking into account Respondent’s failure to respond to the submissions on the language of the proceeding, the Panel, therefore, determines that English shall be the language of the proceeding.

Where a party fails to present evidence in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004. Insofar as Respondents have defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondents. Nonetheless, paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:

(i) the disputed domain names registered by Respondents are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

To prove this element, Complainant must have trademark rights and the disputed domain names must be identical or confusingly similar to Complainant’s trademark.

Complainant submits that Complainant has been incorporated since March 15, 1921 and has carried on business under the name BlueScope Steel Limited since November 17, 2003. Complainant further submits that it operates in least 17 countries and employs more than 16,000 people. Complainant also submits that it operates 25 steel-building solutions facilities across countries including China, Viet Nam, Singapore, Indonesia, Malaysia, Thailand, Sri Lanka, Brunei, Cambodia, Laos, Myanmar and Taiwan, Province of China as well as steel rolling, coating and painting plants located in Australia, New Zealand, Thailand, Malaysia, Indonesia, Viet Nam, India and China. The Panel finds that Complainant’s BLUESCOPE marks are distinctive and well-known by the public for the production of flat steel building products.

The Panel finds that the disputed domain names are confusingly similar to the BLUESCOPE Marks. The disputed domain names contain the identical BLUESCOPE and ZACS marks. It is well established that a domain name is confusingly similar to a mark “when the domain name includes the trademark, or a confusingly similar approximation”. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249. Furthermore, the disputed domain name <bluescope-zacs.com> incorporates the BLUESCOPE and ZACS marks and simply adds a dash between them. Previous UDRP panels have accepted that “[g]enerally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding […] nondistinctive matter to it.’” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23: 50 (4th ed. 1998) cited in Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446. See also TELSTRA CORPORATION LIMITED v. BARRY CHENG KWOK CHU, WIPO Case No. D2000-0423.

In light of the foregoing, the Panel finds that the disputed domain names are confusingly similar to Complainant’s registered marks and that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The Panel finds there is no evidence in the record to indicate that Respondents are associated or affiliated with Complainant or that Respondents have any other rights or legitimate interests in the terms “Bluescope”, “Zacs”, or “Bluescope Zacs”. A complainant is required to make out an initial prima facie case that respondent lacks rights or legitimate interests. Once such a prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d. d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. The Panel finds that Complainant has successfully presented a prima facie case which Respondents have not rebutted. Respondents have filed no response. There have been no other communications from Respondents in connection with this case. Without a response, there is nothing in the case file that indicates that Respondents have a right or legitimate interest in the disputed domain names. Further, as discussed below, the Panel also finds that Respondents are not engaged in a bona fide offering of goods or services. There is also no evidence in the record that Respondents’ use of the disputed domain names is a legitimate noncommercial or fair use, or that Respondents are commonly known by the disputed domain names.

The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

It is unrebutted that Respondents are using confusingly similar disputed domain names to Complainant’s BLUESCOPE marks in connection pay-per-click portal pages at which there are offered links to third party websites, including competitors of Complainant. Further, as established above, there is no evidence in the record to indicate that Respondents are associated or affiliated with Complainant or that Respondents have any other rights or legitimate interest in the terms “Bluescope” or “Zacs”.

Complainant submits that Respondents had knowledge of Complainant’s BLUESCOPE marks when registering the disputed domain names because of Complainant’s established rights and reputation in its BLUESCOPE and ZACS trademarks from well prior to the registration of the disputed domain names and its rights in pending trademark applications for the combined trademarks BLUESCOPE ZACS that were filed in several Asian countries prior to the registration of the disputed domain names. Specifically, the disputed domain names were registered shortly after Complainant’s BLUESCOPE ZACS applications were filed. Complainant further submits that Respondents had knowledge of Complainant’s BLUESCOPE marks when registering the disputed domain names because of Complainant’s extensive operations in China and adjacent areas in South East Asia.

The Panel finds that the disputed domain names were registered with the intention of selling them to Complainant or to a competitor of Complainant at a price vastly in excess of the out-of-pocket costs directly related to the disputed domain names contrary to paragraph 4(b)(i) of the Policy. In particular, Complainant’s solicitors sent a letter of demand to the first Respondent on October 28, 2013 and a reply was received on the same day offering to sell the first disputed domain name for USD 8,600. Similarly, a letter of demand was sent to the second respondent on October 25, 2013 and a reply was received on the same day offering to sell the second disputed domain name for USD 6,000. Further, on October 30, 2013, the website at the second disputed domain name included a notation that this disputed domain name may be for sale and provided a link directed to the website offering the second disputed domain name for sale for USD 8,600. Subsequently, the second disputed domain name was offered for sale at GoDaddy Auctions for USD 9,582.83.

Thus, on the record before it the Panel finds that Respondents registered the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names. Accordingly, the Panel finds that Respondents registered and used the disputed domain names in bad faith.

For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 names <bluescope-zacs.com> and <bluescopezacs.com> be transferred to Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: January 8, 2013

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