WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BRITA GmbH v. Wu Jin Xi / BaoHu Yi KaiQi, YinSi BaoHu Yi KaiQi
Case No. D2015-0800
1. The Parties
The Complainant is BRITA GmbH of Buchhaltung, Germany, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Wu Jin Xi of Qingdao, Shandong, China / BaoHu Yi KaiQi, YinSi BaoHu Yi KaiQi of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <britachinash.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 May 6, 2015. On May 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2015, 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 May 14, 2015 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 May 14, 2015.
On May 11, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On May 14, 2015, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not submit any comments within 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 in Chinese and English, and the proceeding commenced on May 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 8, 2015.
The Center appointed Jonathan Agmon as the sole panelist in this matter on June 22, 2015. 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, BRITA GmbH, is a German company which specializes in water filtration products. The Complainant, under the BRITA mark markets various water filtration products for domestic and commercial use, which are sold worldwide.
The Complainant was established in 1966 and since then has generated vast goodwill in the water filtration business. The Complainant has 1,182 employees worldwide and had annual revenue of EUR 32.5 million in 2013.
The Complainant is the owner of trademark registrations for the mark BRITA around the world, including in China where the Respondent is located. For example: Chinese Trademark Registration No. 632491 for BRITA which was granted on March 10, 1993.
The Complainant also developed a formidable presence on the Internet and is the owner of the domain names <brita.net> and <brita.cn>.
The disputed domain name was registered on March 10, 2015.
Until recently, the disputed domain name led Internet users to a website that displayed goods bearing the Complainant's BRITA mark and logo.
Currently, the disputed domain name resolves to an inactive website.
5. Parties' Contentions
The Complainant argues that the disputed domain name is confusingly similar to the Complainant's BRITA trademark. The Complainant further contends that the addition of the geographical location China and the letters "sh" which represent an abbreviation of the city Shanghai do not avoid a finding of confusing similarity.
The Complainant further argues that the BRITA trademark has generated good will through the Complainant's use.
The Complainant further argues it has not licensed or otherwise permitted the Respondent to use its BRITA trademark and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant argues that the disputed domain name was registered and is being used in bad faith. The Complainant argues the disputed domain name is being used to confuse consumers into believing that the website which used to operate under the disputed domain name is an official BRITA website.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name.
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 Latin characters, rather than Chinese characters;
b) According to the evidence provided by the Complainant, the disputed domain name resolved to a website operating and displaying content both in English and in Chinese; and
c) The Respondent did not object to the Complainant's request that English be the language of the proceeding.
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.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of trademark registrations for the mark BRITA. For example: Chinese Trademark Registration No. 632491 for BRITA which was granted on March 10, 1993.
The disputed domain name differs from the registered BRITA trademark by additional geographical location China and the letters "sh" which represent an abbreviation of the city Shanghai.
The disputed domain name integrates the Complainant's trademark BRITA in its entirety, as a dominant element, with additional geographical elements which do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's trademark.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: "[t]he incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark" (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). Also, "the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark" (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).
Also, the addition of a generic Top-Level Domain ("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 use of the gTLD is technically required to operate the disputed domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to the 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 of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1 of 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 BRITA 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 evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the BRITA trademark long before the registration of the disputed domain name. 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).
The Complainant also provided evidence to demonstrate its trademark's vast goodwill. The Panel cites the following with approval: "[t]he Respondent's selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence. […] Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent's registration and use of the disputed domain name other than that of bad faith" (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the disputed 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 resolves to.
Furthermore, the disputed domain name is confusingly similar to the Complainant's trademark. 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 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.
As evidenced by screen capture annexed to the Complaint, the Respondent used the disputed domain name for a website displaying the Complainant's logo, marketing material and images of products featuring the BRITA mark without the Complainant's authorization. Such use illustrates the Respondent's intent to disrupt the Complainant's business and confuse the Complainant's customers by imitating the Complainant for the Respondent's own gain.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, long after the Complainant's trademark registration the use of the Complainant's trademark in the disputed domain name, the similarity between the disputed domain name and the Complainant's mark, and the website which used to operate at the disputed domain name, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
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<britachinash.com> be transferred to the Complainant.
Date: July 6, 2015.