WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dylos Corporation v. Yang
Case No. D2015-1959
1. The Parties
The Complainant is Dylos Corporation of Riverside, California, United States of America, represented by Stetina Brunda Garred & Brucker, United States of America.
The Respondent is Yang of Nanjing, Jiangsu, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <dylos.com> is registered with Hangzhou AiMing Network Co., LTD (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 30, 2015. On November 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 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 November 9, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 9, 2015, the Complainant confirmed its request that English be the language of the proceeding. On November 10, 2015, the Respondent requested that Chinese be 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, and the proceeding commenced on November 19, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2015. The Response was filed with the Center on December 8, 2015.
The Center appointed Douglas Clark as the sole panelist in this matter on December 14, 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 an American company that produces and sells particle counters (a type of air quality measurement apparatus). The Complainant was incorporated in 2007.
The Complainant is the owner of the trademark DYLOS registered since 2011 in the United States of America. The Complainant filed a trademark application for DYLOS in China in June 2015. The Complainant is also the owner of the domain name <dylosproducts.com>.
The disputed domain name was registered on November 5, 2003 by an individual in Brazil. The disputed domain name was acquired by a Chinese company, 22.cn, in January 2015 and then subsequently transferred to the Respondent on March 30, 2015.
Some time after the Respondent acquired the disputed domain name the website under the disputed domain name mirrored the Complainant's website at <dylosproducts.com>. After the Complainant sent a cease and desist letter the Respondent deleted the mirrored content. The mirrored content included a page where credit card details could be entered.
In response to a cease and desist letter, the Respondent offered to sell the disputed domain name to the Complainant for USD 50,000.
5. Parties' Contentions
The Complainant's contentions are as follows:
Identical or confusingly similar
The Complainant contends that the disputed domain name <dylos.com> is identical to the Complainant's registered trademark DYLOS.
No rights or legitimate interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for DYLOS. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
Before acquiring the disputed domain name, it is highly likely the Respondent knew of the Complainant's rights in the mark DYLOS and acquired the disputed domain name to prevent the Complainant from reflecting its mark in a corresponding domain name and/or disrupting the Complainant's business.
The website the disputed domain name resolved to mirrored the Complainant's website suggesting a desire to make commercial gain from the use of the disputed domain name and/or to defraud consumers by obtaining their credit card information.
Further, The Complainant registered the disputed domain name with the intention of selling it which is evidenced by the fact it offered to sell the disputed domain name to the Complainant for USD 50,000.
The Respondent contended:
1) the name "Dylos" had many possible meanings and had no connection with air quality measurement;
2) the disputed domain name had been registered in 2003 and the Respondent had bought it at auction in February 2015. The Respondent had not offered the disputed domain name for sale on any third party websites;
3) the website under the disputed domain name had no commercial use. The mirroring of the Complainant's website had been a mistake and they had apologised to the Complainant in August 2015 and closed the site in October 2015;
4) the mirrored site was closed and could no longer be found on Google searches;
5) the Respondent had not sought to sell the disputed domain name. The offer of USD 50,000 had been a number plucked from the air made without knowing who the offer was being made to;
6) the disputed domain name had been first registered in 2003 before the Complainant had registered the domain name <dylosproducts.com> and had been used since 2004 as an independent website. The Respondent provided a link to the website <dylos.com.br> archived on the wayback machine to show this use.
6. Discussion and Findings
Language of Proceedings
The language of the Registration Agreement is in Chinese. 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 Complainant requested the language of the proceeding be English the grounds that the Respondent had corresponded with the Complainant in English and the website under the disputed domain name had been entirely in English.
The Respondent requested the language of proceeding be Chinese. It stated that it had corresponded with the Complainant in English with the help of a friend. It had mistakenly put up the mirrored website in English.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
Given the merits of the case being strongly in favour of the Complainant; that the website under the disputed name was entirely in English; that the Respondent communicated with the Complainant in English; and, that the Respondent clearly understands the nature of these proceedings, the Panel does not consider it appropriate to require the Complainant to translate the Complaint.
The Panel determines to follow the Center's preliminary determination. It will render its decision in English.
A. Identical or Confusingly Similar
The disputed domain name <dylos.com> is, other than the generic Top-Level Domain ("gTLD") ".com", identical to the Complainant's trademark DYLOS.
The Panel notes that the Complainant does not have a registered trademark for DYLOS in China and that the Complainant's trademark was only registered in 2011 well after the disputed domain name was first registered. However, the ownership of a trademark is generally considered to be a threshold standing issue. See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The first part of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP."
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish it has rights and legitimate interests. These are:
"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Respondent has not presented any evidence or made any argument to establish rights or legitimate interests under these heads. It has not offered any evidence that is does business or is known by the name "Dylos". The Respondent has solely relied on the previous use by the Brazilian registrant to show that it had legitimate interests. This is not sufficient in itself to show that the Respondent has rights or legitimate interests in the disputed domain name. It has not argued, for example, that it acquired the domain name as part of the acquisition of a business which might, in appropriate cases, help to establish that the transferee of a domain name had rights or legitimate interests in a domain name.
None of the circumstances in paragraph 4(c) of the Policy are, therefore, present in this case.
The second part of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith:
The Respondent acquired the disputed domain name on March 30, 2015. This is the date from which the question of whether the Respondent registered the disputed domain name in bad faith is determined. This is clear from paragraph 4(b)(i) of the Policy which states that in determining if there is bad faith a panel should consider if there are "circumstances indicating that you have registered or you have acquired the domain name".1 The fact that the disputed domain name was registered by a prior registrant before the Complainant existed or acquired trademark rights is irrelevant. The only relevant date from which to consider if there has been registration and use in bad faith is the date the Respondent acquired the disputed domain name, that is March 30, 2015.
The Panel finds that the disputed domain name <dylos.com> was registered in bad faith and is being used in bad faith. This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The website under the disputed domain name was being used to sell products and/or attract users to the website, possibly to obtain their credit card information.
Further, the offer to sell the domain name for USD 50,000 is a circumstance indicating the disputed domain name was registered for the purpose of selling the domain name for valuable consideration in excess of out of pocket expenses. The Respondent did not provide any evidence to show - or even suggest - that it had acquired the domain name for USD 50,000. This is a breach of paragraph 4(b)(i) of the Policy.
The third part of paragraph 4(a) of the Policy is, therefore, satisfied.
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, <dylos.com>, be transferred to the Complainant.
Date: January 4, 2016
1 Emphasis added