WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kaufland Warenhandel GmbH & Co. KG v. Du Biao
Case No. D2015-1650
1. The Parties
The Complainant is Kaufland Warenhandels GmbH & Co. KG of Neckarsulm, Germany, represented by Philip Koch, HK2 Rechtsanwälte, Germany.
The Respondent is Du Biao of Xinxiang, Henan, China.
2. The Domain Name and Registrar
The disputed domain name <kaufland.wang> (the "Disputed Domain Name") is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 17, 2015. On September 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 22, 2015, 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 September 24, 2015, the Center transmitted an email to the parties in Chinese and English regarding the language of the proceeding. On September 25, 2015, the Complainant submitted its request that English be the language of the proceeding. On September 29, 2015, the Respondent sent an email to the Center in Chinese, requesting for the language of the proceeding to be in Chinese instead as English was not his first language.
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 and 4, the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on October 5, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2015.
Several email communications were received from the Respondent on September 28, 29 and October 5, 2015 respectively in which the Respondent proposed settlement of the dispute with the Complainant. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent of proceeding of panel appointment on October 26, 2015.
The Complainant submitted a "supplemental filing" on October 23, 2015 highlighting communications between the parties from September 26, 2015 to October 5, 2015. The Respondent neither commented nor objected to the "supplemental filing".
The Center appointed Kar Liang Soh as the sole panelist in this matter on October 29, 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 is part of the Kaufland Group, a major European retailer chain and is responsible for centralized purchasing for the Kaufland Group which operates over 1,000 supermarkets in various European countries under the trade mark KAUFLAND mostly via affiliated companies. The Kaufland Group opened its first supermarket in 1984. The Kaufland Group's affiliated companies in China and Hong Kong purchase products which are resold in these supermarkets.
The Complainant owns many trade mark registrations incorporating the trade mark KAUFLAND. These include:
Trade Mark No.
September 14, 2010
June 12, 2006
August 8, 2012
March 17, 2006
The Complainant has also registered various domain names incorporating the trade mark KAUFLAND, including <kaufland.cz>, <kaufland.de>, <kaufland.com>, <kaufland.pl>, and <kaufland.hr>. Initial hits on a search of Kaufland on Baidu as of September 17, 2015 point to websites associated with the Complainant.
The Disputed Domain Name was registered on July 3, 2015 and does not appear to resolve to any website. The Respondent was the respondent in BHP Billiton Innovation Pty Ltd v. Du Biao, WIPO Case No. D2015-1025 (the "BHP case") wherein the Respondent was identified as the registrant of the then disputed domain name <bhpbilliton.wang>, but also of other domain names, such as <googlejump.com> and <googlemobility.net>. The Respondent is also the registrant of <lanxess.wang>, <ciscosystems.xyz> and <remycointreau.wang>. Not much else is known about the Respondent. A Google Maps search of the Respondent's address reflected on the WhoIs record of the Disputed Domain Name did not offer any useful results.
The Complainant sent a cease and desist letter to the Respondent on July 15, 2015. The Respondent did not respond to that letter.
5. Parties' Contentions
The Complainant contends that:
a) The Disputed Domain Name is identical or confusingly similar to the Complainant's trade mark KAUFLAND. As it is generally accepted that the generic Top-Level Domain ("gTLD") suffix in the domain name is to be disregarded under the confusing similarity test, the Dispute Domain Name is thus identical to the Complainant's trade mark KAUFLAND;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent had registered several other domain names consisting of third party trade marks. The Complainant relies on the BHP case which also involves the Respondent in the present case. The Complainant highlights that the Respondent's email address is associated with more than 380 other domain names. The Respondent did not reply to the cease and desist letter and did not provided any evidence of any legitimate interest in the Disputed Domain Name. The Disputed Domain Name does not resolve to an active website. Accordingly, the Respondent cannot be said to be making a noncommercial or fair use of the Disputed Domain Name. The Respondent is not commonly known by the name "Kaufland"; and
c) The Dispute Domain Name was registered and is being used in bad faith. It is inexplicable that the Respondent would register the Disputed Domain Name but for the fact that the Respondent knew of the Complainant's trade mark. The word "Kaufland" has no meaning in Chinese and a simple Internet search would have led the Respondent to the Complainant's websites and websites about the Complainant's trade marks. The Respondent's registration of the Disputed Domain Name is a part of a larger pattern of conduct where the Respondent had registered numerous other domain names comprising trade marks of several trade mark owners. The Respondent's conduct amounts to passive holding, not unlike the finding of the panel in the BHP case. The Respondent did not reply to the Complainant's cease and desist letter. The Respondent has provided false address information. There can be no conceivable actual or contemplated use of the Disputed Domain Name as any commercial use would necessarily infringe the Complainant's trade marks.
For all of the above reasons, the Complainant requests the transfer of the Disputed Domain Name.
The Respondent did not file a formal response by the due date, but has on several occasions after the proceeding has commenced intimated that he would like to resolve the issue with the Complainant.
6. Discussion and Findings
6.1 Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, 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.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the parties are treated with equality and that the administrative proceeding should take place with due expedition.
The language of the Registration Agreement for the Disputed Domain Name is Chinese. No agreement appears to have been entered into between the Complainant and the Respondent in this regard. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding for the following reasons:
(a) The Disputed Domain Name was registered in Latin characters;
(b) The Respondent has registered several other domain names consisting of Latin characters;
(c) The contact information provided by the Respondent may be false;
(d) Use of the English language would be fair to both parties as the Complainant does not speak Chinese and would therefore need to have all their documents translated, which would delay the proceeding.
The Respondent has, however, requested for the proceeding to be conducted in Chinese on the basis that he is a Chinese national and English is not his first language. Accordingly, the Respondent asserts, the use of English would be prejudicial to his interests.
Having considered the circumstances, including the bilingual capabilities of the Panel, it is determined that English be adopted as the language of the proceeding with liberty to the Respondent to submit in Chinese. The Panel agrees that maintaining Chinese as the language of the proceeding and requiring a Chinese translation of the Complaint will lead to unnecessary delay to the proceeding, and foreseeably additional burdens on the Complainant.
6.2 Supplemental Filing
There are no express provisions in the Rules in relation to supplemental filings. However, paragraph 10(d) of the Rules clearly permits a panel to determine their admissibility. UDRP panels generally frown on supplemental filings for the simple reason that they may delay and complicate proceedings. Nevertheless, supplemental filings relating to circumstances arising after commencement of proceedings may, in the appropriate case, assist in more expeditious and effective determination of a dispute. Past UDRP panels have accordingly exercised the discretion in favour of receiving such supplemental filings.
In this case, the supplemental filing relates to communication and conduct between the parties after the Complaint was filed. Such information being non-existent before the filing of the Complaint, it cannot be said that the Complainant should have included the information in the Complaint. The supplemental filing outlines various unsolicited offers from the Respondent to sell the Disputed Domain Name to the Complainant starting at RMB 6,000 reducing finally to RMB 2,000 over a series of emails. The supplemental filing also highlights an email of the Respondent admitting to being the respondent of various domain name disputes involving <lanxess.wang>, <ciscosystems.xyz>, <remycointreau.wang> and <bhpbilliton.wang> and claiming to be experienced in domain name dispute matters. In the Panel's view, such conduct is highly relevant to the current proceeding.
Moreover, the unsolicited supplemental filing by the Complainant was made after the proceeding commenced but before the time limited for submission of the Response. As such, the Respondent, if he so chooses, could have objected to or addressed the contents of the supplemental filing at the time of filing the Response. The Respondent chose neither to object to the supplemental filing nor file a Response. The Respondent could not have fairly claimed that his ability to respond was prejudiced by the supplemental filing.
Therefore, the Panel is of the view that the present case is a suitable one for exercising the discretion under paragraph 10(d) of the Rules and hereby allows the supplemental filing.
6.3 Discussion and Findings
To succeed in this proceeding, paragraph 4(a) of the Policy requires the Complainant to show that:
(i) The Disputed Domain Name is identical or confusingly similar to the Complainant's trade mark;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the trade mark KAUFLAND by virtue of its use and registration worldwide of the same as a trademark. The Disputed Domain Name incorporates the trade mark KAUFLAND in its entirety. It is trite that the addition of the gTLD is typically irrelevant when determining whether disputed domain names are confusingly similar to a complainant's trade marks. The Panel thus agrees with the Complainant's submission that the ".wang" gTLD appended to the trade mark KAUFLAND in the Disputed Domain Name does not assist to distinguish the Disputed Domain Name from the trade mark KAUFLAND. Accordingly, the Panel holds that the Disputed Domain Name is identical to the Complainant's trade mark KAUFLAND and the first limb of paragraph 4(a) of the Policy is thus established.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing prima facie that the Respondent lacks rights or legitimate interests in the Dispute Domain Name. Once such a case is made out, the evidential burden shifts to the Respondent.
On a preliminary note, the Panel is doubtful that the BHP case stands for the proposition that a presumption of a lack of rights or legitimate interests in the Disputed Domain Name arises if the Respondent has registered other domain names consisting of third party trademarks, as claimed by the Complainant. Nevertheless, the Panel is satisfied in the present case, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the Dispute Domain Name for the reasons that follow:
a) The Disputed Domain Name did not resolve to any active website and cannot be said to have been used in connection with a bona fide offering of goods or services. There is no evidence otherwise. Further, although the Respondent had the opportunity to state otherwise in his various emails, he has not done so; and
b) The Respondent's name (i.e., "Du Biao"/"杜标") is starkly different from the essential word in the Disputed Domain Name (i.e., "Kaufland"). There is no evidence before the Panel that the Respondent is commonly known by the Disputed Domain Name, or that the Respondent has any rights therein.
Since the prima facie has not been rebutted, the second limb of paragraph 4(a) of the Policy is established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exhaustive circumstances where the registration and use of the disputed domain name will be deemed to be in bad faith. In this instance, the Panel is of the view that at least paragraphs 4(b)(i) and (ii) of the Policy have been satisfied:
(i) circumstances indicating that the Respondent has registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the Disputed Domain Name;
(ii) the Respondent has registered the Disputed Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.
The Complainant has shown by evidence that the Disputed Domain Name has not been put to use (at least for resolving to a website). When faced with the proceeding, instead of resisting the Complaint, the Respondent tried to sell the Disputed Domain Name to the Complainant for sums far exceeding the out-of-pocket costs in securing the registration of the Disputed Domain Name. In this regard, the out-of-pocket costs for registering a domain name under the ".wang" gTLD costs approximately USD 19.99. This is far less than the sums of RMB 2,000 and above offered by the Respondent. The circumstances indicate that the Respondent had no other intention for registering the Disputed Domain Name other than to sell it for a windfall, exactly the circumstances targeted by paragraph 4(b)(i) of the Policy.
The Respondent has also admitted to being involved in numerous domain name disputes in his email of October 5, 2015. In addition to the BHP case, the Panel notes that the Respondent was also the respondent in Remy Cointreau v. du biao, WIPO Case No. D2015-1265 (the "Remy case"). The UDRP panels in both the BHP case and Remy case decided in favour of the respective complainants and ordered the relevant disputed domain names to be transferred. The Panel accepts that this exhibits the pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy. The registration of the Disputed Domain Name prevented the Complainant from reflecting the trade mark KAUFLAND in a corresponding domain name.
The Panel further notes that the Respondent did not reply to the Complainant's cease and desist letter (see America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460). Apart from informal email communications to the Complainant to offer the sale of the Disputed Domain Name as referenced above, no attempt has been made by the Respondent to justify his selection of the Disputed Domain Name. The registration of the Dispute Domain Name is thus an enigma that can only lead one to the conclusion that the Respondent knew or must have been aware of the Complainant's trade mark when it registered the Disputed Domain Name and such registration was made in bad faith (the Remy case).
The Panel is mindful of the evidence of the Reverse WhoIs Lookup printout adduced by the Complainant which shows the Respondent having registered 387 other domain names. Although the printout did not contain complete details of the domain names, the large number corroborates the finding above that the Disputed Domain Name was registered and is being used in bad faith.
In the present circumstances, the Panel is left with no choice but to agree with the Complainant that the Respondent registered and has used the Disputed Domain Name in bad faith.
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 <kaufland.wang> be transferred to the Complainant.
Kar Liang Soh
Date: November 24, 2015