WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carl Mahr Holding GmbH and Helios-Preisser GmbH v. Daniel Havoger, Havoger International Trading (Shanghai) Co., Ltd.
Case No. D2015-1755
1. The Parties
The Complainants are Carl Mahr Holding GmbH of Göttingen, Germany and Helios-Preisser GmbH of Gamertingen, Germany (collectively, the "Complainant"), represented by Rüger, Barthelt & Abel, Germany.
The Respondent is Daniel Havoger, Havoger International Trading (Shanghai) Co., Ltd. of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <preisser-germany.com> is registered with Foshan YiDong Network Co., LTD (the "Registrar").
3. Procedural History
The English language Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 2, 2015. On October 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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 October 8, 2015, the Center sent an email communication to the parites in both Chinese and English regarding the language of the proceeding. On October 9, 2015, the Complainant confirmed its request for English as the language of the proceeding. On October 10, 2015, the Respondent requested Chinese as the language of the proceeding.
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 Chinese and English, and the proceeding commenced on October 15, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2015.
On October 15, 2015, the Respondent sent a Chinese language email communication to the Center indicating that it did not understand the Complaint in English and therefore it could not file a Response. The Respondent also requested the Complaint and its Annexes to be translated into Chinese. On the same day, the Center acknowledged the receipt of this email communication in both Chinese and English and provided a model Response in Chinese. The Respondent did not file a Response by the due date of November 4, 2015 and, on November 5, 2015, the Center informed the parties that it would proceed with panel appointment shortly.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on November 12, 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 a company incorporated in Germany and the owner of international, European Community and German national registrations for the stylised word and device trade marks PREISSER, HELIOS PREISSER and HP HELIOS PREISSER (the "Trade Mark(s)"), the earliest dating from 1988. The Complainant uses the Trade Marks in relation to its business of designing, manufacturing and selling measuring technology products, in particular, calipers, micrometers, dial gauges and inspection equipment (the "Products").
The Respondent is apparently a company incorporated in China.
C. The Disputed Domain Name
The disputed domain name was registered on May 24, 2012.
D. The Website at the Disputed Domain Name
The disputed domain name is resolved to a website which copies the look and feel of the Complainant's "www.helios-preisser.de" website (the "Complainant's Website"); reproduces the HP logo used by the Complainant and comprised in the Complainant's HP HELIOS PRESSER Trade Mark; copies from the Complainant's Website a photograph of the Complainant's headquarters; and promotes and offers for sale the Products in direct competition with those of the Complainant (the "Respondent's Website").
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Marks, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
The Respondent did not formally 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. However, 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 order 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 made the following submissions in support of its language request:
(1) The Respondent bears an English name and apparently operates internationally with places of business in Shanghai, China and Königssee, Germany;
(2) English is the international business language;
(3) The Respondent's Website is in English.
The Respondent made the following submissions in support of its language request:
(1) The Respondent's English proficiency is not good and the Respondent needs to use translation software to understand English, which leads to a high error rate in translating;
(2) The language of the Registration Agreement is Chinese;
(3) The Respondent is unable to respond to the Complaint unless the Complaint and all of the Complaint Annexes are translated into Chinese.
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.
The Panel finds there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in English. In particular, the Panel notes that the Respondent's Website is available in English, German and Chinese; and the default landing page for the Respondent's Website appears to be the English language page.
In light of the voluminous English language content of the Website, and the apparent international operations of the Respondent, the Panel does not find the Respondent's claims regarding its lack of English language ability convincing. 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 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 the language of the proceeding shall be English.
6.2 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 Marks acquired through use and registration.
The disputed domain name comprises the Complainant's PREISSER Trade Mark in its entirety, together with the non-distinctive geographical indicator "Germany", which is descriptive of the country in which the Complainant is based and, in the Panel's opinion, not only does not avoid but also heightens the risk of confusion.
The Panel finds that the disputed domain name is confusingly similar to the Trade Marks.
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 disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Marks. 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 has been 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 Respondent's Website, which, without the Complainant's authorisation, promotes and offers for sale the Products in direct competition with those of the Complainant, flagrantly copies the look and feel and layout of the Complainant's Website, and brazenly reproduces both the Complainant's HP logo and a photograph of the Complainant's headquarters (taken from the Complainant's Website).
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 a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant's prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In light of the evidence of the Respondent's use of the Respondent's Website in the manner described above, the Panel finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used 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 <preisser-germany.com> be transferred to the Complainant Carl Mahr Holding GmbH.
Sebastian M.W. Hughes
Dated: November 26, 2015