WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Reusch GmbH v. Xiaodan Wang/rruesch xingye beijinghuwaiyundongyongpinyouxiangongsi

Case No. D2013-1943

1. The Parties

The Complainant is Reusch GmbH of Reutlingen, Germany, represented by Weinmann Zimmerli, Switzerland.

The Respondent is Xiaodan Wang/rruesch xingye beijinghuwaiyundongyongpinyouxiangongsi of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <rruesch.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2013. On November 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 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. In response to a notification by the Center regarding the Respondent’s information, the Complainant filed an amended Complaint on November 22, 2013.

On November 18, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 21, 2013, the Complainant confirmed its request that English be the language of the proceeding. On November 23, 2013, the Respondent requested that Chinese be the language of the proceeding. On November 25, 2013, the Complainant provided further submission regarding 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2013.

The Center appointed Jonathan Agmon as the sole panelist in this matter on December 30, 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, Reusch GmbH, is a company incorporated in Reutlingen, Germany. The Complainant is one of the biggest five gloves producers in the world and is a leading producer of skiing and snowboarding gloves worldwide. The Complainant has been known for producing gloves since 1934 and it is the exclusive outfitter of some of the big skiing teams in the world as well as some famous football goalkeepers.

The Complainant is the owner of numerous trademark registrations for the REUSCH mark around the world. For example: International Trademark Registration No. 455863 of September 19, 1980; International Trademark Registration No. 482747 of February 2, 1984; Community Trademark No. 8699721 of May 27, 2010; Chinese Trademark No. 3403901 of January 14, 2006; Chinese Trademark No. 3403902 of February 7, 2009 and many more.

Through extensive use around the world, the REUSCH trademark has generated vast good will and has become well-known in connection with sporty gloves.

The Complainant has also developed a presence on the Internet and is the owner of several domain names which contain the name “Reusch”. For example: <reusch.com> and <reusch.cn> and more.

The disputed domain name <rruesch.com> was registered on June 15, 2012.

The disputed domain name resolves to a website offering gloves for sale.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant's REUSCH trademark. The Complainant further argues that the disputed domain name contains the same letters as its trademarks.

The Complainant further argues that the Respondent deliberately misspelled its REUSCH trademark so that the disputed domain name will be visually and phonetically similar to the Complainant’s trademark.

The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant further argues that the Respondent is using the disputed domain name to intentionally attract consumers to the disputed domain name by creating a confusion with the Complainant’s trademarks.

The Complainant further argues that the Respondent is not known by the name of the disputed domain name. The Complainant indicates that the Respondent has no registered business or corporation in the name of the disputed domain name, and if one exists then it was registered only after the Complainant's efforts to stop the piracy acts made by the Respondent.

The Complainant further argues that the Respondent cannot claim for making a legitimate noncommercial or fair use since it is using the disputed domain name for commercial use.

The Complainant further argues that the Respondent had to know of the Complainant’s position in regard to gloves and especially skiing gloves

The Complainant further argues that the Respondent has been using the disputed domain name in bad faith by using it to sell the same goods that have been claimed by the Complainant as well as creating a likelihood of confusion for Internet users and achieving commercial gain from operating the disputed domain name website.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Procedural Issue – Language of the Proceeding

Paragraph 11(a) of the Rules provides that:

“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.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of the proceeding be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this 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 abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

In deciding the language of the proceeding, the Panel takes the following into consideration:

a) The disputed domain name consists of English characters, rather than Chinese characters;

b) The website under the disputed domain name resolves to an online marketplace, which operates also in English;

c) The Respondent, although requesting the language of the proceeding be Chinese, made all communications in the English language.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding be English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The disputed domain name differs from the registered REUSCH trademark by the additional letter “r”, the swap of "EU" with "UE" and the additional generic Top-Level Domain (“gTLD”) “.com”.

The Panel finds that the replacement of the letters “eu” in the REUSCH trademark with the letters “ue” in the disputed domain name <rruesch.com> is not sufficient to escape a finding of confusing similarity (see Sanofi-Aventis, Merrell Pharmaceuticals Inc. v. Howard Hoffman, WIPO Case No. D2007-0042).

The fact that the disputed domain name redirects users to a website offering products similar to the Complainant’s, helps this Panel to conclude that the disputed domain name <rruesch.com> is confusingly similar to the Complainant’s trademarks¹.

Previous UDRP panels have ruled that in order to determine if the disputed domain name is confusingly similar to a to a trademark or service mark in which the Complainant have rights, the Panel must consider the phonetic and visual similarities, and can also consider the context in which the domain name is being used (see Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441).

Comparing the disputed domain name to the Complainant’s registered trademark REUSCH, bring to the conclusion that they are phonetically and visually similar. The Panel cited the following with approval: “[i]t is apparent from a comparison of the Complainants’ trademarks with the Domain Names that the primary components […] are visually and phonetically similar to the Complainants’ […] trademarks, and accordingly the Panel finds that the Domain Names are visually and phonetically similar to the corresponding trademarks in which the Complainants have rights" (Sanofi-Aventis, Merrell Pharmaceuticals Inc. v. Howard Hoffman, WIPO Case No. D2007-0042).

Also, the additional prefix letter “r” does not serve sufficiently to distinguish or differentiate the disputed domain name from the similarity to the Complainant’s trademark, as it is not a distinctive element.

Finally, the addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.

The result is that the Complainant has shown that the disputed domain name is confusingly similar to the Complainant’s REUSCH trademark, in which the Complainant has rights.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the REUSCH trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.

The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from the failure of a party to comply with a provision or requirement of the Rules.

In this present case, the Panel finds there are no exceptional circumstances for the failure of the Respondent to submit a Response.

The Panel can draw from the Respondent’s failure to reply the following two inferences:

(i) the Respondent does not deny the facts which the Complainant asserts, and (ii) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from these facts. The Panel does have however the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (Reuters Limited v. Global Net 2000, Inc, supra).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademarks. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the REUSCH trademark since the year 1980. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735). This conclusion is even more valid when taking into account the vast goodwill that the Complainant had gained in its well-known trademarks.

Paragraph 4(b)(iv) of the Policy provides that it shall be evidence of bad faith registration and use by the respondent, if by using the domain name the respondent had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.

Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’” (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).

The Respondent is using the Complainant’s trademark to promote similar goods to the goods of the Complainant. The Respondent while having knowledge of the Complainant intended to trade off its goodwill. The Respondent’s actions therefore constitute bad faith under the Policy. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. Indeed, the Respondent’s use of the disputed domain name without rights or legitimate interests for promoting similar goods without any disclosure or explanation of the Respondent’s relationship with the Complainant on its website constitutes bad faith on behalf of the Respondent.

The Panel also notes that the disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic for commercial purposes by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

Based on the evidence presented to the Panel, including the late registration of the disputed domain name and the confusing similarity between the disputed domain name and the Complainant's trademarks, the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 name <rruesch.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: January 13, 2014

¹ “The aural and visual comparison of the domain names with a complainant’s trademark is an important part of the issue of confusing similarity. In addition, the content of a website may provide indication as to a respondent’s targeting of a specific trademark through the domain name chosen. Accordingly, the context in which the domain names are being used may be helpful to assess confusing similarity (see Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441). Here, the disputed domain names direct to a webpage displaying products similar to the Complainants’ main field of business. The Panel thus considers that Respondent has sought to take advantage of Internet users typing an incorrect address when seeking to access the Complainants’ websites, a practice known as “typosquatting” and condemned in a number of WIPO panel decisions. (See Playboy Enterprises International Inc. v. SAND WebNames - For Sale, WIPO Case No. D2001-0094, Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587, and Pig Improvement Company, Inc. v. Platinum Net, Inc., WIPO Case No. D2000-1594, and The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492)”. See Schering-Plough Corporation, Schering Corporation v. Dan Myers, WIPO Case No. D2008-1641.