WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ralph Anderl v. Zhuhai Luo
Case No. D2013-1550
1. The Parties
The Complainant is Ralph Anderl of Berlin, Germany, represented by Habermann, Hruschka & Schnabel, Germany.
The Respondent is Zhuhai Luo of Shenzhen, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <icberlinstore.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2013. On September 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 12, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On September 13, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent 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 the Respondent of the Complaint, and the proceedings commenced on September 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2013.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on October 16, 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
The Complainant is an individual resident in Germany and the managing director of the German company, ic!berlin brillen GmbH.
The Complainant is the owner or co-owner of numerous international and national registrations for the trade marks IC, IC!, IC! BERLIN, and IC!-BERLIN (the “Trade Marks”).
The Respondent is an individual apparently with an address in China.
C. The Disputed Domain Name
The disputed domain name was registered on June 19, 2013.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The Trade Marks are exclusively licensed to ic!berlin brillen GmbH, a manufacturer of designer spectacles and sunglasses sold under the Trade Marks. The spectacles sold under the Trade Marks are famous worldwide and have been awarded several design awards.
The disputed domain name is confusingly similar to the Trade Marks.
The Respondent uses the Complainant’s logo on the website to which the disputed domain name resolves (the “Website”), so as to leave the impression that the Website originally refers to the Complainant’s company. The Website is directed to consumers in Europe, the United Kingdom, the United States of America and Australia, with a choice of currency between US dollars, Euros, GB pounds and Australian dollars.
The Respondent does not use the disputed domain name in respect of bona fide goods. The spectacles offered on the Website are in a price range of USD 88 to USD 168, which for the respective models is below the retail price offered by the Complainant’s company worldwide. Therefore, the spectacles offered seem to be counterfeits of IC! BERLIN spectacles. Furthermore, the Respondent is not known to the Complainant and is not an authorised dealer of the Complainant’s company.
The disputed domain name was clearly registered with the only purpose of misleading consumers, which speaks for no legitimate interest in using the disputed domain name. It was registered in bad faith with the aim to disrupt the business of the Complainant’s company and to mislead possible consumers so as to acquire commercial gain from selling counterfeit spectacles to consumers, who being led to the Website erroneously think that they are ordering genuine IC! BERLIN spectacles.
The Respondent did not reply to the 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 unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding 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 proceeding. 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. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (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 Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Website is entirely an English language website targeted to English speaking consumers;
(2) The disputed domain name contains the English word “store”;
(3) It must therefore be assumed that the Respondent is well acquainted with the English language.
The Respondent did not file a Response and did not file any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration which predate the date of registration of the disputed domain name.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
The disputed domain name comprises the Complainant’s IC! BERLIN and IC!-BERLIN trade marks in their entirety, together with the non-distinctive and descriptive word “store”. It also contains the Complainant’s IC and IC! trade marks in their entirety. The fact the disputed domain name does not contain an exclamation mark or a hyphen is immaterial in terms of the question of confusing similarity.
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Marks and holds that the Complaint fulfills 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 non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent’s registration of the disputed domain name by several years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the evidence suggests the Website is being used to offer for sale what appear to be counterfeit IC! BERLIN spectacles. Moreover, the Website features the Trade Mark and the Complainant’s distinctive ic! berlin logo, and contains no explanation regarding the relationship between the Respondent and the Complainant.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Website features the Trade Marks and the Complainant’s distinctive ic! berlin logo and offers for sale unauthorised IC! BERLIN eyewear, and contains no explanation regarding the relationship between the Respondent and the Complainant. Irrespective of whether the goods on the Website are in fact counterfeit products, the Panel finds use of the disputed domain name in this manner is clear evidence of bad faith. The Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 name <icberlinstore.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: October 30, 2013