WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sir Terence Conran and Conran Holdings Limited v. whoisYin Si Bao Hu / Gu Anqi (谷安琪）
Case No. D2016-2511
1. The Parties
The Complainants are Sir Terence Conran (the “First Complainant”) and Conran Holdings Limited (the “Second Complainant”) of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Demys Limited, United Kingdom.
The Respondent is whoisYin Si Bao Hu of Chengdu, Sichuan, China / Gu Anqi (谷安琪) of Changchun, Jilin, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <conran.shop> is registered with West263 International Limited (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2016. On December 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent, whoisYin Si Bao Hu (a privacy service), is listed as the registrant and providing the contact details.
On December 15, 2016, the Center sent an email communication to the Parties in Chinese and English regarding the language of the proceeding. On the same day, the Complainants confirmed their request that English be the language of the proceeding, and the Respondent requested that Chinese be the language of the proceeding.
On December 20, 2016, the Complainants forwarded an email in English from a domain name registration agent to the Center, in which the agent indicated that “domain owners have trademarks in china”; “if you are willing to reconciliation with domain name holders, is the best choice for you”; “[i]f there is a settlement possible, I will only charge 20% commission”; and “[i]f not, you go on with your legal procedure. Has nothing to do with me.”
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 in Chinese and English of the Complaint, and the proceeding commenced on December 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2017. The Response in Chinese was filed with the Center on January 3, 2017. The Respondent identified herself as “Gu Anqi (谷安琪)” in the Response. On the same day, the Center requested the Respondent to confirm if the submission was her final Response so that the Center would proceed with panel appointment. No reply was received from the Respondent. On January 11, 2017, the Center informed the Parties that it would proceed with panel appointment.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on January 20, 2017. 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 First Complainant is a designer and entrepreneur based in the UK and the founder of The Conran Shop.
In 1973 the First Complainant opened The Conran Shop in London, offering contemporary furniture and home furnishings.
The Second Complainant is a company incorporated in the UK and the licensee of the trade marks owned by the First Complainant, including the trade marks CONRAN and THE CONRAN SHOP (the “Trade Mark(s)”). The First Complainant is the owner of registrations for the Trade Mark in numerous jurisdictions worldwide, including UK registration number 1171422 for the Trade Mark CONRAN dating from July 28, 1995; and UK registration number 2409799 for Trade Mark THE CONRAN SHOP dating from May 4, 2007.
The Complainants operate multiple stores under the Trade Marks in the UK, Paris and Japan.
The Respondent is an individual resident in China.
C. The Disputed Domain Name
The disputed domain name was registered on September 27, 2016.
D. Use of the Disputed Domain Name
The disputed domain name is resolved to a domain name parking website provided by “www.sedo.com” (the “Website”) which provides sponsored links to furniture related websites pertaining both to the Complainants’ furniture designs, and to furniture designs of the Complainants’ competitors.
5. Parties’ Contentions
The Complainants contend that the disputed domain name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith.
The Respondent contends that the disputed domain name is not identical or confusingly similar to the Trade Mark, the Respondent has rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has not been registered and used in bad faith.
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.
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 Complainants point to the pre-Complaint English language email communications offering to sell the disputed domain name as evidence of the Respondent’s proficiency in English.
The Respondent claims to have recently purchased the disputed domain name using an agent company in China, disclaims any responsibility for the Website, and professes to be unable to read English.
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 notes that the Website is an English language website. The Panel considers that this fact, irrespective of the Respondent’s protestations, together with the pre-Complaint English language email correspondence between the Parties, provides sufficient evidence to suggest the likely possibility that the Respondent is conversant in English. If the Panel is incorrect in this regard, at the very least it would appear the agent from whom the Respondent claims to have purchased the disputed domain name and/or, on the Respondent’s own case, the previous owner of the disputed domain name who entered into the email correspondence with the Complainants, are able to understand and communicate in English.
The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner and, in this regard, is further persuaded to proceed in the English language by the inherent incredibility of the submissions in the Response.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should the language of the proceeding be English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(1) It will accept the filing of the Complaint in English;
(2) It will accept the filing of the Response in Chinese; and
(3) It will render this Decision in English.
6.2 Substantive Elements of the Policy
The Complainants 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 Complainants have rights in the Trade Marks acquired through use and registration; the disputed domain name comprises the Trade Mark CONRAN in its entirety and is therefore, excluding the generic Top-Level Domain (“gTLD”) (“.shop”) (in accordance with established UDRP practice), identical to the Trade Mark CONRAN; and, including the gTLD “.shop”, is confusingly similar to the Trade Mark THE CONRAN SHOP.
Accordingly, the first element under paragraph 4(a) of the Policy has been made out.
The Respondent asserts that the Complainants do not possess any registrations for the Trade Marks in China, but the location of a complainant’s relevant trade mark rights is immaterial for the purposes of the first limb under paragraph 4(a) of the Policy; and it is not necessary for complainants to demonstrate any relevant trade mark rights in the jurisdiction in which respondents are based. See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Furthermore and in any event, the First Complainant is in fact the owner of several registrations for the Trade Mark CONRAN (if not the Trade Mark THE CONRAN SHOP) in China.
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 Complainants have 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 claims that her website is currently under construction and seeks to disclaim responsibility for the current Website. The Respondent claims that she purchased the disputed domain name from her corporate domain name agent on December 12, 2016 and that, on the very next day, the Website was locked. The Respondent asserts that her website that is under construction will relate to green foods and a healthy diet.
The Respondent further claims that her partner(s) is/are the owner of trade mark registration numbers 17726240; 5156936; 5156890; 5429184; 5156891 and 20615551 in China, and that she has been authorized to use these trade marks, but has failed to indicate which trade marks these registrations relate to, nor has the Respondent provided copies of the relevant registration certificates, or otherwise adduced any documentary evidence in order to establish her rights or legitimate interests in respect of such registrations.
In accordance with paragraph 4.5 of WIPO Overview 2.0, the Panel has searched the publicly available online records of the Chinese Trade Marks Office in respect of the above trade mark registrations. Application number 17726240 for the device mark CONRAN 康蓝 and four squares device is apparently owned by a company based in Shenzhen, China: 深圳市康蓝装饰设计工程有限公司, with no apparent relationship with the Respondent. This mark also appears to be invalid. Application number 5156936 (appears to be invalid), and Registration numbers 5156890 and 5156891 for the exact same device mark CONRAN 康蓝 and four squares are apparently owned by an individual “夏清” with, on the evidence before the Panel, no apparent relationship with the Respondent. The Panel has been unable to obtain any relevant trade mark records in respect of numbers 5429184 and 20615551.
Furthermore, the publicly available website apparently owned and operated by or on behalf of the owner of Application number 17726240, 深圳市康蓝装饰设计工程有限公司, appears to relate to a legitimate office decoration business based in Shenzhen, China and with no apparent connection with the Respondent.
The Respondent has submitted together with her Response a screenshot of her putative website containing a generic photograph of fruit, vegetables and eggs and an (apparently unregistered) composite logo containing a leaf design, the English words “conran.shop”, and the Chinese characters “匆然” (which does not have any particular meaning in Chinese).
It is apparent that the Respondent’s planned healthy diet website bears no correlation with the office decoration business in respect of which trade mark registration numbers 17726240; 5156936; 5156890 and 5156891 have been used in Shenzhen, China.
In light of the above, the Panel has no hesitation in rejecting the Respondent’s attempts to fabricate rights or legitimate interests with reference to third party trade mark rights apparently wholly unrelated to the Respondent and her claimed putative 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 no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
According to the WhoIS search filed with the Complaint, the disputed domain name was initially registered by “whoisYin Si Bao Hu” on September 27, 2016. The Complainant has exhibited with the Complaint a chain of English language email correspondence between “Chen Yu” and the Complainant dated November 21-23, 2016 and December 5, 2016, whereby the said Chen Yu offered to sell the disputed domain name to the Complainant for USD 5,000. The Respondent claims she did not purchase the disputed domain name until December 16, 2016 and asserts that she has not offered the disputed domain name for sale. The Panel has reservations regarding the Respondent’s assertions that she had nothing to do with the offer to sell the disputed domain name to the Complainant; and that she simply purchased the disputed domain name innocently from a corporate domain name agent shortly after the offer was made. Nonetheless, the Panel is unable to conclude, on the state of the evidence and in light of the Respondent’s denial, that, on the balance of probabilities, the disputed domain name has been offered for sale by the Respondent in bad faith in accordance with paragraph 4(b)(i) of the Policy.
The Panel does not however find the Respondent’s assertion that the Website has been locked and that she is unable to control the Website convincing. As at the date of this decision, the Website is still operating and it is still apparently providing pay-per-click revenue to the Respondent by providing sponsored links to websites regarding furniture design. The Panel accordingly finds that the disputed domain name has been registered and used in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
The Panel further considers that, in addition to the Respondent’s ongoing use of the Website, all the circumstances of this case, including the fact the disputed domain name is identical or confusingly similar to the Trade Marks, and the Complainants’ registration and use of the Trade Marks worldwide (including in China) for many years, support a finding of bad faith on the part of the Respondent, on the grounds that it is likely the Respondent knew of the Complainants and of their rights in the Trade Marks at the time of registration (or transfer) of the disputed domain name.
The Panel is further fortified in making its finding of bad faith by the dishonest manner in which the Respondent has sought to establish rights and legitimate interests in respect of the disputed domain name, by claiming rights to use of unrelated trade marks apparently owned and used by unrelated third parties in China.
For 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 <conran.shop> be transferred to the Second Complainant Conran Holdings Limited (in accordance with the Complainant’s request in paragraph 11 of the Complaint).
Sebastian M.W. Hughes
Dated: February 3, 2017