WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dyson Research Limited v. Jia Qiong

Case No. D2013-2124

1. The Parties

The Complainant is Dyson Research Limited of United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Wragge & Co LLP, UK.

The Respondent is Jia Qiong of Guyan, Ningxia, China.

2. The Domain Names and Registrar

The disputed domain names <dyson-japan.com>, <dyson-jp.com> and <dysonlife.com> (the “Disputed Domain Names”) are registered with Shanghai Meicheng Technology Information Development Co., Ltd, part of the US Orange Network Alliance (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2013. On December 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 17, 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 December 18, 2013, the Center transmitted by email to the parties in both English and Chinese regarding the language of proceedings. On December 20, 2013, the Complainant submitted by email its request that English be the language of proceedings. The Respondent did not submit any comments 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 December 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 16, 2014. The Respondent did not submit any response. Accordingly, the Centre notified the Respondent’s default on January 17, 2014.

The Center appointed Soh Kar Liang as the sole panelist in this matter on January 22, 2014. 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 Dyson Research Limited, a limited company incorporated under the laws of England and Wales. The Complainant is part of a group of companies which is in the business of domestic vacuum cleaners, hand dryers, fans and heaters. The Complainant’s group of companies first used the DYSON trademark on the vacuum cleaners in the UK in 1993. Products under the DYSON trademark has seen been sold in more than 50 countries around the world.

The Complainant owns trademark registrations in several countries incorporating the word “Dyson” (the “DYSON Mark”), including the following:

 

Jurisdiction

Trademark number

Registration date

Community Trade Mark

63065262

April 7, 2008

Japan

4768530

February 10, 2003

Japan

5467438

February 3, 2012

China

6334841

March 28, 2010

China

6334842

March 28, 2010

China

6334843

May 14, 2010

 

Japanese trademark registration 4768530 relates to the composite mark “DYSON ダイソン”. The Katakana characters ダイソン is a phonetic transliteration of the DYSON Mark in Japanese.

The Complainant has an online presence operating a Japanese language website at “www.dyson.co.jp” as well as maintaining a corporate Facebook page at “www.facebook.com/DysonJP”.

There is limited information about the Respondent beyond that contained in the WhoIs database. The Dispute Domain Names were registered on October 10, 2013. As of November 13, 2013, the Disputed Domain Name <dyson-jp.com> resolved to a Japanese language website which offers various brands of vacuum cleaners including several under the trademark ダイソン and several under trademarks which do not appear to be associated with the Complainant (e.g., ELECTROLUX, ROOMBA). The website appears to offer online shopping cart facilities.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The Disputed Domain Names are confusingly similar to the DYSON Mark. The DYSON Mark has earned extensive goodwill and reputation in the UK and elsewhere and is well-known. The only difference between the Disputed Domain Names and the DYSON Mark is the addition of suffixes to the Disputed Domain Names.

(b) The Respondent has no rights or any legitimate interests in the Disputed Domain Names. The Respondent did not obtain any form of license to use any of the DYSON Mark, or to register any domain name incorporating the DYSON Mark. There is no relationship between the Complainant and the Respondent. The Disputed Domain Names <dyson-japan.com> and <dysonlife.com> previously resolved to websites similar to that resolved from <dyson-jp.com>. All these websites were used in a commercial sense, selling various electronic items, including products by of the Complainant’s group of companies.

(c) The Disputed Domain Names were registered and used in bad faith. The resolved from the Disputed Domain Names mimicked a website operated by Lohaco. Lohaco’s website warned of non-legitimate scam websites, identifying “www.dyson-jp.com” and “www.dysonlife.com”, among them. The Respondent has deliberately used the DYSON Mark to divert consumers in an effort to derive commercial gain.

B. Respondent

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

6. Discussions and Findings

6.1 Language of Proceedings

The language of the registration agreement was Chinese and the default language of the proceeding would therefore be Chinese. However paragraph 11(a) of the Rules empowers the Panel to determine otherwise having regard to the circumstances.

The Complainant has requested for the language of this proceeding to be English. Having reviewed the circumstances, the Panel hereby determines that the language of the proceeding shall be English. In arriving at this decision, the Panel took the following factors into consideration:

(a) The website resolved from the Disputed Domain Name <dyson-jp.com> was entirely in Japanese.

(b) Other than the WhoIs details of the Disputed Domain Names being associated with incomplete contact details in China and the Respondent’s name which could be the name of a person of Chinese origin, there is no other evidence that supports the possibility that the Respondent is resident in China or understands Chinese;

(c) The Respondent did not object to the Complainant’s request that English be the language of proceedings;

(d) By failing to file a Response, the Respondent has elected not to participate in the proceeding;

(e) The Complaint has already been filed in English. Insisting that the proceeding should be in Chinese will lead to delay to the proceeding and higher burden on the Complainant; and

(f) There is no foreseeable benefit to the parties if the language of the proceedings is in Chinese.

6.2 Discussion

To succeed in this proceeding, the Complainant must establish all 3 limbs of paragraph 4(a) of the Policy, namely;

(a) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(c) The Disputed Domain Names have been registered and are being used in bad faith

The Panel proceeds to consider each of these 3 limbs in turn.

A. Identical or Confusingly Similar

The DYSON Mark is registered in multiple jurisdictions and the Complainant accordingly enjoys trademark rights in the DYSON Mark. All three Disputed Domain Names incorporate the DYSON Mark in its entirety. The Panel agrees that the only difference between the DYSON Mark and the Disputed Domain Names lies in the addition of suffixes “-japan”, “-jp” and “life” in the Disputed Domain Names. The Panel is of the view that each of the suffixes is descriptive in nature and is unable to distinguish the corresponding Disputed Domain Name from the DYSON Mark. Accordingly, the Panel finds all the Disputed Domain Names to be confusingly similar to the DYSON Mark and holds that the first limb of paragraph 4(a) of the Policy is established.

B. Rights or Legitimate Interests

It is the consensus of previous UDRP panels that a complainant is only required to show a prima facie case. The Complainant has confirmed that the Respondent is not affiliated with the Complainant. The Complainant has also confirmed that the Complainant has not authorized, licensed or otherwise permitted the Respondent to use the DYSON Mark. There is no evidence before the Panel to indicate that the Respondent is commonly known by any of the Disputed Domain Names. Although the Disputed Domain Name <dyson-jp.com> resolved to a website, there is no evidence that the Respondent is making any bona fide offering of goods or services whether on this website, or on websites resolved from the other Disputed Domain Names. The Panel is of the view that the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names. Since the Respondent did not submit a Response, the prima facie case has not been rebutted.

The Panel therefore finds the second limb of paragraph4(a) of the Policy established.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy identifies the following situation of bad faith registration and use:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site of location.”

The Complainant’s trademark registrations for DYSON pre-date the registration of the Disputed Domain Names by at least 1 year to several years. The website resolved from the Disputed Domain Name <dyson-jp.com> clearly referred to the Japanese version of the DYSON Mark, namely, ダイソン in association with vacuum cleaners. The immediately impression to the Panel is that these vacuum cleaners appear similar in design to those appearing on the Complainant’s website. Based on the available evidence, it is inconceivable that the Respondent was not aware of the DYSON Mark at the time of registering the Disputed Domain Names. The website resolved from <dyson-jp.com> appears to the Panel to be directed at commercial gain. As such, the circumstances point to the conclusion that the registration and use of the Disputed Domain Names will create a likelihood of confusion with the DYSON Mark as to source, sponsorship, affiliation or endorsement of websites and/or products on such websites resolved from the Disputed Domain Names.

Although printouts of the websites previously resolved from <dyson-japan.com> and <dysonlife.com> were not available in the evidence, the Complainant’s allegation that these websites were of similar nature to that resolved from <dyson-jp.com> has not been refuted by the Respondent. Since all three Disputed Domain Names were registered by the Respondent on or about the same date, the Panel believes that these must have been registered under the same contextual setting as discussed above in relation to <dyson-jp.com>.

The Panel therefore holds that the third limb of the Policy is established in relation to all the Disputed Domain Names.

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 domain names <dyson-jp.com>, <dyson-japan.com> and <dysonlife.com> be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Dated: February 12, 2014