WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Umicore v. Privacy Service Provided by Withheld for Privacy ehf / logon logan and sergio sandrin; qin xian sheng; and Changzhou Shi Liqun Zhuangshi Cailiao Co., Ltd

Case No. D2021-4354

1. The Parties

The Complainant is Umicore, Belgium, represented by Gevers, Belgium.

The Respondents are Privacy Service Provided by Withheld for Privacy ehf, Iceland / logon logan and sergio sandrin, both United States of America; qin xian sheng, Singapore; and Changzhou Shi Liqun Zhuangshi Cailiao Co., Ltd, China.

2. The Domain Names and Registrars

The disputed domain names <am-umicore.com> and <umicoreservices.com> are registered with NameCheap, Inc., the disputed domain name <umicor.com> is registered with Key-Systems GmbH, and the disputed domain name <umicore-tec.com> is registered with Xiamen 35.Com Technology Co., Ltd. (collectively “the Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2021. On December 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 23, 24, 27, and 30, 2021, the Registrar transmitted by emails to the Center their verification responses disclosing registrants and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 30, 2021 providing the registrants and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on January 13, 2022.

On December 30, 2021, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on December 31, 2021. The Respondents did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on January 19, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2022. The Response in Chinese by Changzhou Shi Liqun Zhuangshi Cailiao Co., Ltd was filed with the Center on January 30, 2022.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on February 24, 2022. 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 based in Belgium, and is part of a globally active group of companies providing materials and recycling technology, and performing research and development activities for clean technologies, such as emission control catalysts, materials for rechargeable batteries and recycling. The Complainant claims to have more than 10,000 employees globally and a turnover of EUR 10.4 billion. The Complainant has offices located across Europe, North America, Africa and Asia (including in China).

The Complainant provides evidence that it owns a large trademark portfolio protecting the mark UMICORE, including, but not limited to, International Trademark registration number 775794 for the word mark UMICORE, registered on January 22, 2002, designating, inter alia, China, and International Trademark registration number 1400844 for the logo mark UMICORE, registered on November 27, 2017, designating, inter alia, China.

The disputed domain names were registered on the dates and by the registrants shown below:

For the reasons stated in section 6.1 below, this decision will deal with the disputed domain name <umicore-tec.com> only. This disputed domain name was registered at a later date than the abovementioned trademarks of the Complainant. The disputed domain name <umicore-tec.com> is not in use and directs to an inactive webpage.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that all the disputed domain names including <umicore-tec.com> are confusingly similar to its trademarks for UMICORE, that the Respondents have no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered, and are being used in bad faith. The Complainant requested the proceedings be consolidated against all the disputed domain names.

The Complainant particularly contends that all the Respondents have purposefully registered the disputed domain names which incorporate the Complainant’s UMICORE mark in an effort to create an impression of direct affiliation with the Complainant and to use the Complainant’s trade name and trademarks. The Complainant also contends that the Respondents are in no way connected to or licensed by the Complainant, and that there are no other justifications for the use of its trademarks in the disputed domain names. The Complainant argues that the use of the disputed domain names cannot be considered a bona fide offering of goods or services since the disputed domain names do not currently resolve to any active websites. The Complainant contends that its trademark for UMICORE is distinctive and fanciful and that the Respondents’ abusive registration and use of the UMICORE trademark in the disputed domain names does not confer any rights or legitimate interests on them, and constitutes registration and use in bad faith.

The Complainant requests that the disputed domain names be transferred to it.

B. Respondent

The only Respondent that replied to the Complaint is the Respondent for the disputed domain name <umicore-tec.com>.

The Respondent, Changzhou Shi Liqun Zhuangshi Cailiao Co., Ltd, essentially contends in its Response that it has no relationship with the registrants for the other three disputed domain names, that the registration of the disputed domain name <umicore-tec.com> does not interfere with the Complainant’s trademark since the Parties’ products and industries are completely different, that it has legitimately registered the disputed domain name because “Umicore Tec” is the name for one of the Respondent’s technology products which include a core material, that it has applied for trademark protection in China before registering the disputed domain name <umicore-tec.com>, and that it has already invested a large amount of money in the preliminary design and preparation for the website hosted at the disputed domain name <umicore-tec.com>.

6. Discussion and Findings

6.1 First Preliminary Issue: Request for Consolidation of Multiple Respondents

The Complainant requested consolidation of the Respondents in a single Complaint.

In this regard, paragraphs 3(c) and 10(e) of the Rules, respectively, provide that: “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder” and “A panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. It follows from the foregoing paragraphs of the Rules and from the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 4.11.2, that the consolidation of multiple respondents in a single administrative proceeding may, in certain circumstances, be appropriate, provided that 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 such consolidation is procedurally efficient, fair and equitable to all Parties (see also earlier UDRP decisions such as Lennar Pacific Properties Management, Inc., Lennar Mortgage, LLC v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, 杨智超 (Zhichao Yang),WIPOCase No. D2021-4262).

In the present case, the Complainant essentially contends that the disputed domain names are all under common control based on the following elements: the similar naming pattern of the disputed domain names, two of the disputed domain names were registered with the same Registrar using the same privacy service, the Chinese language linking two of the Respondents, the irregularities in the contact information of two of the Respondents, and the alleged activated messaging services for two of the disputed domain names.

The Panel finds that these factors, considered alone or in combination, do not sufficiently support the Complainant’s claim that there is common control being exercised by the Respondents over the disputed domain names. The Panel particularly notes the following facts: the Respondent, Changzhou Shi Liqun Zhuangshi Cailiao Co., Ltd, explicitly states in its Response that it has no relationship or connection of any kind with the other disputed domain names in this administrative proceeding; there are no similarities between the Respondents’ identities and contact information to render a clear link; the disputed domain names were registered on different dates with different Registrars; and the language of the Registration Agreements for the disputed domain names is different. Based on the above elements, the Panel finds that the Complainant has not demonstrated that the disputed domain names are under common control, or that there is an affiliation between the Respondents.

Accordingly, having regard to the above circumstances, the Panel hereby rejects the Complainant’s request for consolidation. The Panel, however, accepts the Complaint filed in relation to the disputed domain name, <umicore-tec.com>, for which a Response was filed, and will confine its Decision accordingly to that disputed domain name only.

The Complainant remains at liberty to file new complaints in respect of the other disputed domain names. Further references below to the Respondent and the disputed domain name in this Decision are therefore intended to refer solely to the Respondent, namely Changzhou Shi Liqun Zhuangshi Cailiao Co., Ltd, and the disputed domain name, namely <umicore-tec.com>. This Decision is made without prejudice to the possibility of refiling complaints regarding the other disputed domain names in this administrative proceeding.

6.2 Second Preliminary Issue: Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, 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.

According to the verification response of the Registrar Xiamen 35.Com Technology Co., Ltd., the language of the Registration Agreement for the disputed domain name is Chinese. Nevertheless, the Complainant filed its Complaint in English, and requests that English be the language of the proceeding. The Panel notes that the Respondent did not comment on the language of the proceeding but did file a Response in Chinese.

In considering this request, the Panel has carefully reviewed all elements of this case, and deems the following elements particularly relevant: the Complainant’s request that the language of the proceeding be English; the lack of comment on the language of the proceeding by the Respondent (the Panel notes that the Respondent was invited by the Center in a timely manner in Chinese and English to present its comments on the language of the proceeding in either Chinese or English, but chose not to do so); the fact that the disputed domain name contains the entirety of the Complainant’s trademark and is written in Latin letters and not in Chinese characters; the fact that the Respondent has filed a Response responding to the specific arguments presented by the Complainant (in English) from which the Panel deducts that the Respondent understands English sufficiently to be able to respond to the Complaint; and, finally, the fact that Chinese as the language of the proceeding could lead to unwarranted delays and additional costs for the Complainant. In view of all these elements, the Panel grants the Complainant’s request, and decides that the language of this proceeding shall be English. Nevertheless, the Panel, which understands both English and Chinese, decides to accept the Response as filed in Chinese, and does not require a translation of any document submitted in this proceeding (see WIPO Overview 3.0, section 4.5.1).

6.3 Discussion and Findings on the Merits

The Policy requires the Complainant to prove three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the mark UMICORE, based on its use and registration of the same as trademarks in several jurisdictions, including China.

As to confusing similarity of the disputed domain name with the Complainant’s trademarks, the Panel considers that the disputed domain name consists of the combination of two elements, respectively the Complainant’s UMICORE trademark combined with the term “tec”, which is commonly used in English as an abbreviation for the descriptive words “technical”, “technician” or “technology”. According to the WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel concludes that the disputed domain name contains the entirety of the Complainant’s UMICORE trademark, which remains easily recognizable in the disputed domain name. The Panel considers that the addition of the term “tec” therefore does not prevent a finding of confusing similarity. The Panel also notes that the applicable generic Top-Level Domain (“gTLD”) (“.com” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview 3.0, section 1.11.1.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee, or distributor of the Complainant, that the Respondent is not a bona fide provider of goods or services under the disputed domain name and is not making a legitimate noncommercial use or fair use of the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1).

In the Response, the Respondent essentially contends that it has rights or legitimate interests in the disputed domain name because the registration of the disputed domain name does not interfere with the Complainant’s trademark since the Parties’ products and industries are completely different, that it has applied for trademark protection in China for the disputed domain name before registering it and that the Respondent has already invested a large amount of money in the preliminary design and preparation for the website hosted at the disputed domain name. The Panel notes that the Respondent has not substantiated its contentions with any evidence. The Panel conducted an independent search¹ at the website of China Trademark Office and noted there is a trademark application for UMICORE with number 56574732 which was applied by 常州市利群装饰材料有限公司 (which could be the Chinese equivalent for Changzhou Shi Liqun Zhuangshi Cailiao Co., Ltd) on June 1, 2021. However, this trademark is still pending for registration. Further, based on the case file, there is no evidence showing that the Respondent is commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights.

Moreover, the Respondent does not provide any evidence regarding its business or the alleged products (or the industry under which they could be classified) that it would intend to offer through the disputed domain name, which remains entirely inactive to date. Finally, the Respondent has not provided evidence regarding investments in preliminary design and preparation for the website it would host at the disputed domain name. Accordingly, the Panel must consider these arguments as unsubstantiated and cannot be relied upon.

The Panel concludes, upon review of the facts, that the disputed domain name directs to an inactive webpage. In this regard, the Panel finds that holding a domain name passively, without making any use of it, does not confer any rights or legitimate interests on the Respondent (see earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691, and Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui), WIPO Case No. D2021-1685).

Furthermore, the Panel considers that the nature of the disputed domain name, incorporating the Complainant’s registered trademark for UMICORE in its entirety, combined with the descriptive term “tec”, which is commonly used in English as an abbreviation for the descriptive words “technical”, “technician” or “technology”, and refers to the Complainant’s area of business, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant (see WIPO Overview 3.0, section 2.5.1).

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Panel considers that the trademark UMICORE is fanciful, distinctive and used intensely by the Complainant on a global basis (including in the Respondent’s jurisdiction China). The Respondent asserts that “Umicore Tec” is the name for one of the Respondent’s technology products because the products have a core material. While the Panel agrees that “core” could be short for “core material” and “tec” could be short for “technology”, the Respondent did not explain the choice of “umi” in the disputed domain name. The Panel therefore finds on balance that the registration of the disputed domain name by the Respondent was intended to take unfair advantage of the Complainant’s trademarks for UMICORE, by using such mark in its entirety in the disputed domain name to mislead and divert Internet users to the disputed domain name. Moreover, given the distinctiveness and fame of the Complainant’s trademark and its extensive activities in China ², the Panel finds that it is more likely than not that the Respondent knew or should have known, of the existence of the Complainant’s trademark and the registration of the disputed domain name targeted this trademark. In the Panel’s view, the preceding elements establish the bad faith of the Respondent in registering the disputed domain name.

As to use of the disputed domain name in bad faith, the disputed domain name links to an inactive website. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”. The Panel has reviewed all elements of this case, and attributes particular relevance to the fact that the disputed domain name contains the entirety of the Complainant’s trademark, to the distinctiveness and fame of the Complainant’s trademark for UMICORE, to the Complainant’s extensive activities in China, to the fact that the Respondent does not provide any creditable explanation for its choice of “Umicore” in the disputed domain name, and does not provide any evidence to support its claimed use of the disputed domain name, and to the unlikelihood of any good faith use to which the disputed domain name may be put by the Respondent. In these circumstances, the Panel considers that the passive holding of the disputed domain name by the Respondent also constitutes use of the disputed domain name in bad faith in this case. On the basis of the foregoing elements, the Panel finds that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.

The Panel therefore rules that the Complainant has satisfied the requirements of the third element under the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules:

(a) the Panel orders that the disputed domain name <umicore-tec.com> be transferred to the Complainant.

(b) the Complaint is denied as regards the domain names <am-umicore.com>, <umicoreservices.com>, and <umicor.com>.

Deanna Wong Wai Man
Sole Panelist
Date: March 10, 2022

¹ Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. See WIPO Overview 3.0, section 4.8.