WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Sky Factory, L.C. v. Guangzhou Gavin Electronics Co., Ltd / Whois Agent, Domain Whois Protection Service
Case No. D2014-0516
1. The Parties
The Complainant is The Sky Factory, L.C. of Fairfield, Iowa, United States of America ("US"), represented by Cantor Colburn LLP, US.
The Respondent is Guangzhou Gavin Electronics Co., Ltd of Guangzhou, China; Whois Agent, Domain Whois Protection Service of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <skyfactorychina.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 April 1, 2014. On April 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 2, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 6, 2014.
On April 2, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On April 4, 2014, the Complainant requested that English be the language of the proceeding while the Respondent requested that Chinese be 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 in both Chinese and English, and the proceeding commenced on April 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2014. The Response was filed with the Center on April 28, 2014.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on May 2, 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.
On May 7, 2014, the Respondent filed a supplemental filing.
4. Factual Background
The Complainant is a company incorporated in the State of Iowa in the US and the owner of a trade mark registration for the trade mark SKY FACTORY in the US (the "Trade Mark"), with a date of first use of February 2008.
The Respondent is a company incorporated in China.
C. The Disputed Domain Name
The disputed domain name was registered on July 2, 2013.
D. The Website at the Disputed Domain Name
The website at the disputed domain name (the "Website") previously promoted the Respondent's business and in particular its several LED lighting products.
5. Parties' Contentions
The Complainant made the following submissions in the Complaint.
The Complainant is a well-known manufacturer of luminous sky ceilings, luminous virtual windows, digital cinema virtual skylights and digital cinema presentations of land and sea, offered for sale under the Trade Mark. In addition to its presence in the US market, the Complainant sells its goods under the Trade Mark through international partners in 44 countries outside the US.
The disputed domain name is confusingly similar to the Trade Mark. It comprises the Trade Mark in its entirety, together with the non-distinctive and descriptive word "China".
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with or authorised by the Complainant in any way and is not commonly known by the disputed domain name. The Respondent is not using the disputed domain name in respect of a bona fide offering of goods or services.
The disputed domain name has been registered and used in bad faith. It has been used in order to intentionally attract Internet users for commercial gain to the Website, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Website or of the products or services on the Website. The products offered for sale on the Website, including LED sky ceilings, virtual skylights, LED pure ceiling panel lights, LED floor panels, LED dance floors, LED wall panels and LED light murals, are similar to the products sold by the Complainant under the Trade Mark, which exacerbates the likelihood of confusion.
The Respondent made the following submissions in the Response and in its supplemental filing.
The Respondent was established on January 19, 2007 and its main business is in the manufacture of various LED lighting products. The Respondent has been recognised as a leading private technology company in Guangzhou province. For many years the Respondent has been committed to independent research and development of innovative energy saving lighting products. The Respondent has 14 utility model patent registrations, 3 design patent registrations and 3 pending invention patent applications in China.
The Respondent has clients in more than 30 countries and has received numerous testimonials in respect of its innovative lighting products.
Given increasing pollution problems in China and worldwide, the Respondent has developed its interior lighting products in order to create an indoor "sky factory" in the true sense. The Respondent registered the disputed domain name in 2013 in order to reflect this vision for its products.
The website of the Complainant at "www.skyfactory.com" resolves to an error page in China. Therefore, the Respondent does not know or have no way to know about the Complainant.
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.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances of the administrative proceeding. 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, as:
(1) The content of the Website is in English; and
(2) The Respondent's automatic response email is in English.
The Respondent has requested that Chinese be 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).
On the evidence filed by the Complainant, the Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is sufficiently proficient in the English language (Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432). 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 unduly 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:
(1) It will accept the filing of the Complaint in English;
(2) It will accept the filing of the Response in Chinese; and
(3) It will render this Decision in English.
6.2 Supplemental Filing
The consensus view under paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("the WIPO Overview") is that UDRP panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response.
The Respondent has not provided reasons as to why it was not able to file the supplemental information in the Response. However, the Panel notes the supplemental filing seeks to elaborate on the submissions and information included in the Response, including providing further information regarding the patents applied for or registered by the Respondent in China.
In all the circumstances, the Panel determines that it will accept the Respondent's supplemental filing. As this is a transfer decision, and as the supplemental information simply elaborates on the information already included in the Response, the Panel has determined it is not necessary to allow the Complainant the opportunity to make further submissions in reply.
6.3 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 Mark acquired through use and registration which predates the date of registration of the disputed domain name by several years.
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).
It is also established that the addition of generic terms to a domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253). The mere addition of a generic or descriptive term does generally not exclude the confusing similarity (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
The disputed domain name contains the Trade Mark in its entirety. The Panel concludes that the use of the generic word "China", the name of the country in which the Respondent is based, does not serve to distinguish the disputed domain name from the Trade Mark in any significant way.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
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 non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the respondent's 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) the respondent (as an individual, business, or other organisation) has been commonly known by the 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 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 Mark. The Complainant has prior rights in the Trade Mark 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; 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 is used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Website, which has not been authorised by the Complainant, and which promotes and offers for sale interior LED lighting products similar to those manufactured by the Complainant. In all the circumstances, the Panel concludes such use does not amount to a bona fide offering of goods or services under the Policy.
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 any legitimate noncommercial or fair use of the disputed domain name.
The Panel notes that, at some stage following the filing of the Complaint, the Website has been taken down. In all the circumstances, the Panel considers this constitutes further evidence in support of the conclusion that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Panel finds that the Respondent has failed to produce satisfactory 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 of a domain name in bad faith on the part of a respondent:
"By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online 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 Complainant has prior rights in the Trade Mark which precede the Respondent's registration of the disputed domain name by several years. The disputed domain name has been used in respect of the Website, which has not been authorised by the Complainant, and which promotes and offers for sale interior LED lighting products similar to those manufactured by the Complainant.
The Panel refers to and repeats its findings under the second limb of paragraph 4(a) of the Policy above. The Panel is convinced that this is a clear case of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
For 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 <skyfactorychina.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: May 16, 2014