WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dürkopp Adler AG v. Mr. Yu

Case No. D2012-2433

1. The Parties

Complainant is Dürkopp Adler AG of Bielefeld, Germany, represented by Rau, Schneck & Hübner, Germany.

Respondent is Mr. Yu of Shenzhen, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <duroppadler.com> is registered with 35 Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2012. On December 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On December 19, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On December 21, 2012, Complainant confirmed its request that English be the language of proceeding. Respondent did not comment on the language of proceedings 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 Respondent of the Complaint, and the proceedings commenced on January 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 25, 2013.

The Center appointed Yijun Tian as the sole panelist in this matter on February 12, 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, Dürkopp Adler AG, is a company incorporated in Bielefeld, Germany. Complainant is a world leading producer of industrial sewing machines. Complainant has exclusive rights in the DÜRKOPP ADLER Marks globally since 1987 (see Annex 3 to the Complaint). Complainant is the exclusive owner of well-known registered trademarks DÜRKOPP ADLER in many countries, including China (since 2003; see Annex 3 to the Complaint).

Respondent is Mr. Yu of Shenzhen, Guangdong, China. The disputed domain name <duroppadler.com> was registered on July 17, 2008, long after the DÜRKOPP ADLER Marks became internationally well-known.

5. Parties’ Contentions

A. Complainant

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

- Complainant is owner of numerous national and international trademarks DÜRKOPP ADLER registered for different types and components of sewing machines as well as control units for these machines and respective computer programs (see Annexes 3 and 4 to the Complaint).

- The disputed domain name <duroppadler.com> is extremely similar to Complainant’s DÜRKOPP ADLER trademarks especially as the trademark contains the umlaut “ü” which does not exist in English and therefore is frequently replaced by either “u” or “ue”.

- The DÜRKOPP ADLER trademark of Complainant is extremely similar to the disputed domain name <duroppadler.com> of Respondent.

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

- Respondent does not seem to hold any trademarks or other rights in regard to the term “duroppadler” or “Dürkopp Adler”.

- Respondent does not seem to have any other rights in regard to the terms “duroppadler” or “Dürkopp Adler” which are older than Complainant’s above-mentioned trademarks.

- There are no indications that Respondent has been commonly known by the name “duroppadler”.

- Respondent is using its website resolved at <duroppadler.com> to advertise sewing machines, i.e. goods which are included in the list of goods of Complainant’s trademarks (see Annex 5 to Complaint).

- Respondent is using the term “Shenzen Duropp Adler Sartorius Co., Ltd” in the way of a company name (see Annex 6 to Complaint). It is unclear whether a company with this name is registered at all.

(c) The disputed domain name was registered and is being used in bad faith.

- On the printout (Annex 5 to the Complaint) it can be seen that the originator of the website resolved at <duroppadler.com> is using the e-mail address durkoppadler@163.com which is even closer to Complainant’s trademarks.

- The disputed domain name <duroppadler.com> was only chosen to even minimal distance from Complainant’s trademarks on the one hand and to exploit the similarity to the trademarks of Complainant on the other hand.

- On the website at the disputed domain name <duroppadler.com> Respondent has used photographs and texts which are under copyright of Complainant without Complainant’s approval (see the warning letter to Respondent; Annex 6 to the Complaint).

- By using the disputed domain name, Respondent 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 or service on Respondent’s website or location.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the 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 on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceedings should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceedings for the following reasons:

(a) Respondent is obviously familiar with English as a language. The Internet site resolved at <duroppadler.com> is available in both languages. The navigation items on top the Internet site are in English and Chinese as are the other relevant areas “search”, “catalog” and “link” (see Annex 7 to the Complaint).

(b) The printouts (Annexes 8 and 9 to the Complaint) showing products suitable for the industrial sewing machines. All the respective product names are in Chinese and English language.

(c) A single printout for a needle plate, which is also a part for industrial sewing machines, whose name is in English language as well (Annex 10 to the Complaint).

(d) In order to be able to deal with orders placed on the basis of the office on the Internet site at <duroppadler.com> Respondent has to have an above average grasp of the English language. Otherwise it would be impossible to do business as shown.

(e) Under the link “durkopp” Respondent offers 16 pages of parts for industrial sewing machines produced by Complainant, whereas the catalogue as a whole consists of 290 pages of parts. All these goods are parts for technologically advanced industrial sewing machines.

(f) It is impossible that Respondent is not prepared sufficiently to deal with orders from English speaking customers.

(g) Complainant is convinced that by choosing the TLD “.com” Respondent has also made clear that he would welcome a business from outside of China, i.e. business from English speaking customers.

Respondent did not make any submissions with respect to the language of the proceedings and did not object to the use of English as the language of the proceedings.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceedings should not be 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). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“in certain situations, where Respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from Germany, and Complainant will be spared the burden of working in Chinese as the language of the proceedings. The Panel has also taken into consideration the facts that the websites at the disputed domain name includes Latin characters “duropp” and “adler” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds adequate grounds in the present proceeding to accept Complainant’s request and to proceed in English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <duroppadler.com> is registered in Latin characters, rather than Chinese script; (b) Complainant has sent the cease and desist letter in English, and Respondent has never answered, neither to reply to the issues raised in the letter, nor to state that he does not understand the content (Annex 6 to the Complaint); (c) the Website at the disputed domain name is a mainly Chinese-based website, but the webpages do contain some English words. For example, the navigation items on top the Internet site are in English and Chinese as are the other relevant areas “search”, “catalog” and “link” (see Annex 7 to the Complaint); (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceedings; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds 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. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

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 name should be cancelled or transferred:

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

(ii) 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.

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:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the DÜRKOPP ADLER Marks acquired through registration. The DÜRKOPP ADLER Marks have been registered worldwide including in China, and Complainant has a widespread reputation as a world leading producer of industrial sewing machines (Annex 8 to the Complaint).

The disputed domain name <duroppadler.com> is very similar to the Complainant’s DÜRKOPP ADLER Mark, especially as the trademark contains the umlaut “ü” which does not exist in English and therefore is frequently replaced by either “u” or “ue”. Moreover, on the printout (Annex 5 to the Complaint) it can be seen that the originator of the website resolved at <duroppadler.com> is using the e-mail address durkoppadler@163.com which is even closer to Complainant’s trademarks.

Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

The WIPO Overview 2.0, paragraph 1.10, states: “Consensus view: A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.”

The disputed domain name comprises the most of characters of DÜRKOPP ADLER Mark (including “adler” entirely). The only difference is the missing of “k” after “dur”. Thus, the Panel finds that the difference is not sufficient to negate the confusing similarity between the disputed domain name and the DÜRKOPP ADLER Marks. (see also Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; and Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971).

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests 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 in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant is the exclusive owner of the well-known registered trademarks DÜRKOPP ADLER in many countries, including China (since 2003; see Annex 3 to the Complaint), which long precedes Respondent’s registration of the disputed domain name (July 17, 2008). According to Complainant, Complainant is a world leading producer of industrial sewing machines. Complainant has exclusive rights in the DURKOPP ADLER Marks globally since 1987 (see Annex 3 to the Complaint).

Moreover, Respondent is not an authorized dealer of DÜRKOPP ADLER branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

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

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the words “duropp” and “adler” in its business operation or the use of the DÜRKOPP ADLER Marks and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the DÜRKOP ADLER Marks or to apply for or use any domain name incorporating the DÜRKOPP ADLER Marks;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. The disputed domain name <duroppadler.com> was registered on July 17, 2008. The disputed domain name is identical or confusingly similar to Complainant’s DÜRKOPP ADLER Marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actually advertising, offering and selling purported DÜRKOPP ADLER branded products on the website at the disputed domain name <duroppadler.com> (Annexes 5 and 7-10 to the Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name in light of Complainant’s prima facie case. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

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

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark 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 disputed domain name; or

(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

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

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

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent registered and has been using the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the DÜRKOPP ADLER Mark with regard to its products. Complainant has registered its DÜRKOPP ADLER Marks internationally, including registration in China (since 2003) where the Respondent is located. Moreover, the Website advertises for sale various purported DÜRKOPP ADLER branded products. Respondent would likely not have advertised products purporting to be DÜRKOPP ADLER branded products on the Website if it was unaware of Complainant’s reputation. In the other words, it is not conceivable to the Panel that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the DÜRKOPP ADLER Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the UDRP panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s DÜRKOPP ADLER Mark.

b) Used in Bad Faith

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 websites” offering purportedly Complainant’s DÜRKOPP ADLER branded products and services without authorization. Complainant claimed that, by using the disputed domain name, Respondent 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 or service on Respondent’s website or location.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the DÜRKOPP ADLER Marks (as well as the content on the Website mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (see Annexes 5 and 7-10 to the Complaint). In other words, Respondent has through the use of a confusingly similar disputed domain name and webpage contents created a likelihood of confusion with the DÜRKOPP ADLER Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are likely led to believe that the website at <duroppadler.com> is either Complainant’s site or the site of official authorized agents of Complainant, while it is not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use the disputed domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent on the Website to which the disputed domain name resolves are indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <duroppadler.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: March 14, 2013