WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Julius Blum GmbH v. Liu Zhenxing
Case No. D2016-0402
1. The Parties
The Complainant is Julius Blum GmbH of Höchst, Austria, represented by Patentwälte Torggler & Hofinger, Austria.
The Respondent is Liu Zhenxin of Nanning, Guangxi, China.
2. The Domain Name and Registrar
The disputed domain name <blumchina.com> 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 February 29, 2016. On February 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 2016, 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 March 4, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. On March 7, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on March 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2016.
The Center appointed Jonathan Agmon as the sole panelist in this matter on April 19, 2016. 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 multinational corporation that was founded in 1952 and one of the largest manufacturers of high quality furniture fittings in the world.
The Complainant’s BLUM trademark is registered in 1993 in many countries including in China. The registrations provide trademark protection for different types of furniture fittings in Classes 6 and 20.
The Complainant owns and has registered the domain name <blum.com> and maintains an active web site at “www.blum.com”.
The disputed domain name was registered on September 7, 2011.
5. Parties’ Contentions
The Complainant argues that the disputed domain name is nearly identical or confusingly similar to the BLUM trademark in which it has rights.
The Complainant argues that the Respondent is using the disputed domain name in connection with the sale and advertisement of furniture fittings.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never licensed or authorized the Respondent to register or use its trade mark BLUM in a domain name.
The Complainant further argues that the Respondent is using the mark BLUM with the geographical wording “China” to confuse consumers into believing that they have reached the Complainant’s website for China, or to create a false impression that the Respondent is associated or affiliated with the Complainant.
The Complainant argues that the disputed domain name was registered and is being used in bad faith.
The Complainant argues that the geographical indicator “china” clearly suggests an affiliation with the Complainant, in a way that customers seeking spare parts or support for the Complainant’s products would enter the disputed domain name expecting to contact the Complainant’s Chinese subsidiary.
The Complainant argues that the Respondent has registered and is using the disputed domain name in bad faith and with the fraudulent intent to lure Internet users into the belief that the Respondent is affiliated with the Complainant.
The Complainant argues that when registering the disputed domain name, the Respondent must have been aware of the Complainant which is doing business in China since 2001.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) 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 proceeding should be English.
The Complainant claims that the Respondent is familiar with the English language since the disputed domain name resolves to a webpage which contains portions in English e.g., “SERVO DRIVE”, “DYNAMIC SPACE BY BLOOM” and “COPYRIGHT”.
In addition, the Complainant argues that the Respondent chose English names for its company – “BLOOM CHINA” and “BLOOM OCTAVIA”.
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).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
a) The disputed domain name consists of Latin letters, rather than Chinese letters;
b) The web site under the disputed domain name employs words in the English language including the Complainant’s trademark in the English language;
c) The Respondent, which received documents relating to the dispute, both in the English and Chinese languages, did not object to the Complainant’s request that English be the language of proceedings.
Upon considering the above, the Panel rules that English be the language of the proceeding.
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 the BLUM trademark. For instance, the Complainant is the owner of International Registration Nos. 11713633, 996626, 598611 for the mark BLUM designating China.
The disputed domain name reproduces the Complainant’s BLUM trademarks in its entirety, as a dominant element.
The additional term “china” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark, since it is a geographical term for a location where the Complainant conducts business.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate a domain name from the relevant registered trademark: “The Panel agrees that with the wholesale incorporation of the YAHOO sign (which is the primary word element in the Complainant’s YAHOO! mark), the addition of the descriptive word ‘page’ does not at all serve to remove the confusing similarity with the Complainant’s mark, all the more in the context of webpages or websites”. (See Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, WIPO Case No. D2011-0702).
The addition of the generic Top-Level Domain (“gTLD”) “.com” to the disputed domain name does not avoid a finding of 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 the use of a TLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark 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, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant has established a prima facie case 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 BLUM trademark, or a variation thereof, and that 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 as such 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 clearly shows that the Respondent registered the disputed domain name long after the Complainant started to use the name and trademark BLUM and long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the BLUM trademark at least since the year 1993. This trademark has been used extensively worldwide. The evidence shows that the Complainant has been doing business in China since at least 2001. It is suggestive of the Respondent’s bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name and has been used widely in the local language variant (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
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 website or other online location to which the domain name is resolved, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location to which the domain name is resolved.
The disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels have 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.
Further, the Complainant submitted evidence proving that the Respondent has incorporated the BLUM marks and logos on its website. This use is made in order to attract consumers for commercial gain by purporting to sell services for the Complainant’s products. The Respondent is also promoting and selling other products on the web site under the disputed domain name. These products are complimentary to the Complainant’s products and would serve to dilute the Complainant’s trademarks. Such practice confirms not only the Respondent’s awareness of the Complainant and its products, but also the Respondent’s actual use of the Complainant’s name in bad faith (see Swarovski Aktiengesellschaft v. Tevin Duhaime, WIPO Case No. D2012-2170).
In the instant case, the Complainant has provided evidence to show that its BLUM trademark has a strong reputation and is widely known worldwide and specifically in China. The record also shows that the Respondent provided no evidence and did not respond to the Complaint or to the cease-and-desist letter the Complainant sent him. These facts lead to a clear conclusion that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making of its trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of this mark. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”.
Another indication of the Respondent’s bad faith use is the incorporation of the Complainant’s trademark together with the Respondent’s other mark OCTAVIA in small letters and underneath the Complainant’s mark. Such use under the disputed domain name by the Respondent, who has no plausible explanation for doing so would constitute clear bad faith registration and use. (Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273). The circumstances of this case indicate that the Respondent has registered the disputed domain name to prevent the Complainant from reflecting its trademark in the disputed domain name. Such behavior is additional evidence of bad faith registration and use of the disputed domain name.
In light of the Complainant’s registered trademark and the Respondent’s use of a confusingly similar disputed domain name, offering the Complainant’s products and other products which are complimentary to the Complainant’s products, using the Complainant’s trademark and all the other circumstances noted above, the Panel finds that the Respondent registered and is using 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 <blumchina.com> be transferred to the Complainant.
Date: April 25, 2016