WIPO Domain Name Decision: D2007-1572

Complainant is Bonac Innovation Corporation, Vancouver, British Columbia, Canada, represented by Perkins Coie, LLP, United States of America.

The disputed domain name <mobiado.net> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ¡°Center¡±) on October 24, 2007. On October 24, 2007, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba dns.com.cn a request for registrar verification in connection with the domain name at issue. On October 30, 2007, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Registrar has indicated that the language of the registration agreement in the present case is Chinese, Complainant has submitted a request that English be the language of the proceedings. The Center has invited Respondent to provide any comments and/or supporting materials it may have in relation to Complainant¡¯s language request no later than 5 pm November 2, 2007, but the Center did not receive any response from Respondent. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ¡°Policy¡±), 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 in both English and Chinese, and the proceedings commenced on November 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2007. Respondent did not submit any response. Accordingly, the Center notified the Respondent¡¯s default on November 27, 2007.

The Center appointed Susanna H.S. Leong who is conversant in English and Chinese as the sole panelist in this matter on December 5, 2007. The Panel shall have the discretion to decide on the language of the present proceedings. 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.

Complainant is Bona Innovation Corp. which manufactures markets and sells mobile telephones and mobile telephone accessories under the trade mark MOBIADO. MOBIADO branded telephone products are recognized throughout the mobile telephone industry as ¡°luxury products¡± which are made from only the finest of materials and using superior craftsmanship. These mobile telephones are targeted at a more discriminating group of consumers. Complainant sells and markets its MOBIADO mobile telephones exclusively through a network of authorized MOBIADO dealers. Presently, Complainant¡¯s authorized dealers are located in Indonesia and Thailand, the Russian Federation and the United Arab Emirates, the United Kingdom of Great Britain and Northern Ireland, and Western Europe. At present, Complainant does not have an authorized dealer in China.

Complainant is the owner of a registered trade mark MOBIADO in Canada (Registration Number TMA681309). Since 2004, Complainant has invested significant resources in promoting and advertising its MOBIADO trade mark. In addition, Complainant has registered, and actively uses, domain names that incorporate its MOBIADO trade mark to market and sell its MOBIADO telephones. These domain names are <mobiado.com> and <mobiado.com.ru>.

Complainant sells the following telephones under the MOBIADO trade mark MOBIADO Luminoso; the MOBIADO Professional Series Specification A; MOBIADO Professional Series EM; and the MOBIADO Professional Series EM LE. Complainant does not sell or market a telephone named ¡°MOBIADO Luminoso GSM 2007¡±, nor has Complainant authorized anyone to sell or market a telephone with such a name.

Respondent registered the disputed domain name <mobiado.net> on May 20, 2007 with Beijing Innovative Linkage Technology, Ltd. dba dns.com.cn. The content of Respondent¡¯s ¡°www.mobiado.net¡± website is virtually identical to Complainant¡¯s legitimate websites except for two important differences: (a) Respondent¡¯s website contains a link describing the specifications and features of the ¡°MOBIADO Luminoso GSM 2007¡± telephone (which is not a product of Complainant); (b) Respondent¡¯s website does not contain the usual disclaimer found at the bottom of every page of Complainant¡¯s legitimate website.

Complainant contends that it has rights in the trade mark MOBIADO and that through extensive use and promotional activities, its MOBIADO trade mark has attained famous mark status in the luxury market for mobile telephones in Canada and in many countries throughout the world.

Complainant contends that Respondent¡¯s domain name is identical to Complainant¡¯s MOBIADO trade mark and satisfies the first element of the Policy.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:

1. Complainant has not authorized Respondent to use its MOBIADO trade mark and Respondent has not independent rights in that mark;

2. Respondent¡¯s use of the disputed domain name is not a noncommercial or fair use of Complainant¡¯s MOBIADO trade mark;

3. Respondent¡¯s use of the disputed domain name is not in connection with a bona fide offering of goods or services;

4. Respondent¡¯s use of the MOBIADO trade mark to sell or advertise the sale of counterfeit products is not a legitimate non-commercial fair use;

5. Respondent¡¯s diversion of Complainant¡¯s consumers to an unauthorized website that advertises counterfeit products of inferior quality tarnishes Complainant¡¯s MOBIADO trade mark; and

Complainant contends that Respondent has registered and used the disputed domain name in bad faith for the following reasons:

1. Respondent has registered the domain name for the purpose of intentionally attracting users to Respondent¡¯s website by suggesting that Respondent¡¯s website is affiliated with, or endorsed by, Complainant. Consequently, Respondent has obtained a commercial benefit through sales of counterfeit products marketed under the MOBIADO trade mark.

2. Respondent has registered the disputed domain name with knowledge of Complainant¡¯s rights in the MOBIADO trade mark as evidenced by (a) the fact that the word ¡°mobiado¡± is arbitrary and fanciful and could not have been conceived by Respondent; (b) the fact that Complainant engages in widespread and long-standing advertising and marketing of its products under the MOBIADO trade mark; and (c) the fact that the disputed domain name website copies the photographs, typeface, content, and layout of Complainant¡¯s ¡°www.mobiado.com¡± website.

3. Respondent has used the term ¡°mobiado¡± in its domain name and throughout its website to create actual confusion regarding the source of Respondent¡¯s counterfeit products for commercial gain.

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between Complainant and Respondent to the effect that the proceedings should be in English. Complainant has submitted a request that English is the language of the present proceeding because (a) that the registration agreement can be found in both Chinese and English; (b) that the website hosted at the disputed domain name is in English; and (c) that the majority of evidence at issue in this case can be found in English.

After considering the circumstances of the present case and the submission of Complainant¡¯s request, the Panel is of the opinion that the language for the present proceedings should be in English and the decision will be rendered in English. The Panel based its decision on the following reasons:

¡°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.¡±

Thus, parties may agree on the language of the administrative proceeding. In the absence of an 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 ability to articulate the arguments for the case.

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. In particular, the Panel notes that (a) the disputed domain name is in English; and (b) the contents of Respondent¡¯s website are offered in English. The Panel also notes that the Center has notified Respondent of the proceedings in both Chinese and English. Respondent has a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, Respondent has chosen not to respond to Complainant¡¯s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

After considering the circumstances of the present case, the Panel decides that the proceeding should be English and the decision will be rendered in English.

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:

1. the domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;

2. Respondent has no rights or legitimate interests in respect of the domain name; and

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the MOBIADO mark in Canada since it has first obtained registered trade mark rights in February 2007 in relation to mobile telephones and accessories. The Panel rules that Complainant has rights and continues to have such rights in the relevant MOBIADO mark.

The disputed domain name consists of Complainant¡¯s MOBIADO mark in its entirety with the suffix ¡°.net¡±. The Panel finds that the term ¡°mobiado¡± in Complainant¡¯s MOBIADO mark is an arbitrary word and it is the distinctive portion of Complainant¡¯s marks and it has been reproduced in its entirety in the disputed domain name. The Panel finds the ¡°mobiado¡± portion to be the most prominent part of the disputed domain name which will attract consumers¡¯ attention. It is also an accepted principle that the addition of suffixes such as ¡°.net¡± being the generic top-level domain is not a distinguishing factor. The confusion generated by Respondent¡¯s domain name is further heightened by the fact that Complainant is the owner of domain names such as <mobiado.com> and <mobiado.com.ru> and has been using these domain names extensively to market its goods and services on the Internet. Consequently, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant¡¯s trade marks in which Complainant has rights.

The burden of proof on this element lies with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to respondent to rebut complainant¡¯s contentions.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Panel finds that Complainant has made out a prima facie showing and notes that Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

1. Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of ¡°mobiado¡± in its business operations;

2. There was no evidence to show that Complainant has licensed or otherwise permitted Respondent to use its trade mark or to apply for or use any domain name incorporating the trade mark;

3. There is no indication that Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;

4. Complainant and its MOBIADO mark enjoy a reputation, in Canada and beyond, with regard to its luxurious high-end mobile telephones and accessories. Consequently, in the absence of contrary evidence and satisfactory explanations from Respondent, the MOBIADO mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

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

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

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

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

The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the Panel can also constitute registration and use of the domain name in bad faith by Respondent in the appropriate cases.

One important consideration in the Panel¡¯s assessment of whether Respondent has registered and used the domain name in bad faith is prior knowledge on the part of Respondent of Complainant¡¯s rights in the trade mark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. Therefore, the Panel finds that it is highly unlikely that Respondent would not have had actual notice of Complainant¡¯s trade mark rights at the time of the registration of the domain name. The Panel¡¯s findings are further buttressed by the following evidence that (a) Complainant¡¯s MOBIADO mark is an arbitrary mark with no descriptive significance to the underlying goods or services and is unlikely to be used by Respondent to describe its goods or services; (b) Respondent has purported to copy the photographs, typeface, content and layout of Complainant¡¯s ¡°www.mobiado.com¡± website; and (c) Respondent has offered for sale counterfeit products such as ¡°MOBIADO Luminoso GSM 2007¡± bearing Complainant¡¯s trade mark. Consequently, in the absence of contrary evidence and satisfactory explanations from Respondent, the Panel finds that the MOBIADO mark which has acquired a substantial reputation in a niche market of high-end mobile telephones and accessories is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. Thus, it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name. However, Respondent has chosen not to respond to Complainant¡¯s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by Respondent in bad faith with the intent to create an impression of an association with Complainant and its products and services, and profit there from.

Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent¡¯s website offering counterfeit products which are passed off as Complainant¡¯s, i.e., luxurious high-end mobile telephones and accessories. Given the substantial reputation of Complainant¡¯s MOBIADO mark in the niche market of high-end mobile telephones and accessories, the compelling conclusion is that Respondent, by choosing to register and use a domain name which is identical or confusingly similar to Complainant¡¯s widely known and distinctive trade mark, intended to ride on the goodwill of Complainant¡¯s trade mark in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. Potential partners and end users are led to believe that the website ¡°www.mobiado.net¡± is either another of Complainant¡¯s websites or it is the site of official authorized partners of Complainant, while in fact it is neither of these. Consequently, Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with Complainant¡¯s MOBIADO trade mark and this constitutes a misrepresentation to the public that Respondent¡¯s website is in one way or the other associated or connected with Complainant¡¯s. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.

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, <mobiado.net> be transferred to Complainant.