WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer Intellectual Property GmbH v. Zheng Weiping / Domain WhoIs Protection Service
Case No. D2014-0936
1. The Parties
The Complainant is Bayer Intellectual Property GmbH of Monheim am Rhein, Germany, represented by BPM Legal, Germany.
The Respondent is Zheng Weiping / Domain WhoIs Protection Service of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <insqin.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 June 3, 2014. On June 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 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 June 12, 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 June 20, 2014. On June 12, 2014, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On June 20, 2014, the Complainant confirmed its request that English be the language of the proceeding. On June 14, 16 and 21, 2014, the Respondent claimed not to understand English and requested that the Complaint be translated into Chinese.
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 proceeding commenced on June 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2014. The Respondent did not submit any formal Response.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on July 25, 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 a company incorporated in Germany and the owner of registrations for the trade mark INSQIN (the "Trade Mark") in Germany and the European Union, both with filing dates of December 18, 2013. The Complainant has also filed pending applications for registration of the Trade Mark in China, Taiwan Province of China and in Hong Kong, China.
The Respondent is an individual located in China.
C. The Disputed Domain Name
The disputed domain name was registered on December 20, 2013.
D. The Website at the Disputed Domain Name
The disputed domain name previously resolved to a website (the "Website") which provided sponsored links to third party websites.
5. Parties' Contentions
The Complainant made the following submissions in the Complaint.
The Complainant belongs to the Bayer group of companies, a global enterprise with core competencies in the fields of health care, nutrition and high-tech materials ("Bayer"). Bayer is represented by over 250 affiliates and has more than 111,000 employees worldwide. The stock of Bayer's holding company is included in nearly all the major share indices, including the DAX 30, a Blue Chip stock market index consisting of the 30 major German companies trading on the Frankfurt Stock Exchange. Bayer does business on all five continents, manufacturing and selling numerous products, including human pharmaceutical and medical care products, veterinary products, diagnostic products, agricultural chemicals and specialty polymers.
In 2013, Bayer developed a waterborne polyurethane technology that is the key ingredient to build high performance and more sustainable polyurethane leather and other coated fabrics. The technology has since been launched under the Trade Mark, which is an invented word with a high degree of distinctiveness, associated solely with the Complainant.
The disputed domain name is identical to the Trade Mark.
The Respondent is a professional domainer who has no rights or legitimate interests in respect of the disputed domain name, and has previously been subject to a UDRP proceeding in which the relevant domain name was transferred to the relevant complainant. The Respondent is not affiliated with or authorised by the Complainant. 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 respect of the Website, in respect of which the Respondent has derived pay-per-click revenue via the sponsored links on the Website. The Respondent has also offered the disputed domain name for sale, via the "www.domainsponsor.com" website (with a minimum offer price of USD 2,000), and also in pre-Complaint email correspondence with the Complainant (at a price of USD 8,000).
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.
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.
The Complainant has requested that English be the language of the proceeding, for the following reasons:
(1) The Respondent is clearly familiar with English - having set up the Website being an English language site; having offered the disputed domain name for sale using the English language "www.domainsponsor.com" website operated by an entity in the United States of America; having communicated with the Complainant in English prior to the filing of the Complaint; and having been a the respondent in a previous English language domain name proceeding;
(2) The Complainant is unable to communicate in Chinese and would be prejudiced by having the proceeding take place in Chinese.
The Respondent sent email correspondence to the Center in Chinese, claiming not to be proficient in English and requesting an English language translation of the Complaint.
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.
Notwithstanding the Respondent's assertions that it is not proficient in English, in addition to the evidence of the Respondent's pre-Complaint English language email correspondence with the Complainant, the Panel notes that both the Website and the "www.domainsponsor.com" website are entirely in English. The Panel therefore finds, in all the circumstances, that sufficient evidence has been adduced to suggest that the Respondent is conversant in the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
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.
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.
The disputed domain name is identical to the Trade Mark.
The Panel therefore finds that the disputed domain name is identical to the Trade Mark and 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 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.
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 provides sponsored links to third party websites in order to generate pay-per-click revenue for the Respondent. In all the circumstances of this case, 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 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 of a domain name in bad faith on the part of a 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 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 Panel finds that the Respondent more likely than not was aware of the Complainant and had the Trade Mark in mind when registering the disputed domain name. The Trade Mark appears to be an invented word, solely connected with the Complainant. Furthermore, the disputed domain name was registered on the same day the Complainant filed trademark applications for the Trade Mark in China. The evidence demonstrates that the disputed domain name has been registered and used in order to attract Internet users to the Website for commercial gain, by creating a likelihood of confusion with the Trade Mark, in order to generate pay-per-click revenue for the Respondent. This falls squarely within the example of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
In addition, the disputed domain name has clearly been offered for sale both on the "www.domainsponsor.com" website (for a minimum of USD 2,000) and in pre-Complaint email correspondence with the Complainant (for USD 8,000), both sums amounting to valuable consideration in excess of the Respondent's out-of-pocket expenses directly related to the disputed domain name (see paragraph 4(b)(i) 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 <insqin.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: August 8, 2014