WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carlsberg A/S v. Xu Guo Xing
Case No. D2017-0301
1. The Parties
The Complainant is Carlsberg A/S of Copenhagen, Denmark, represented by Bettinger Scheffelt Kobiako von Gamm, Germany.
The Respondent is Xu Guo Xing of Jinan, Shandong, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <carlsberg.shop> is registered with West263 International Limited (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on February 14, 2017. On February 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2017, 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 February 17, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Respondent submitted two emails on February 17, 2017, and February 18, 2017, filing an informal Response. The Respondent did not submit any further communications to the Center. The Complainant requested that English be the language of the proceeding and filed a translation of the Complaint in Chinese on February 20, 2017. The Respondent did not comment on the language of the proceeding by 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 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2017.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on April 3, 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 Complainant is a Danish brewing company founded in 1847 with its headquarters in Copenhagen, Denmark. The Complainant is the one of the largest brewery groups in the world. The Complainant's major beer brand is Carlsberg.
The Complainant is the owner of over 1,000 registrations in jurisdictions around the world for the trade mark CARLSBERG (the "Trade Mark") having been registered in the United Kingdom of Great Britain and Northern Ireland ("United Kingdom") since June 5, 1928 (United Kingdom trademark 00000492101). The Complainant also holds numerous registrations for the Trade Mark in China.
The Complainant has also registered the Trade Mark with the Trademark Clearinghouse ("TMCH").
The Trade Mark is a well-known trade mark in relation to beer and related products.
The Respondent appears to be an individual located in China.
C. The Disputed Domain Name
The disputed domain name was registered on September 23, 2016.
D. The Website at the Disputed Domain Name
Prior to the filing of the Complaint, the disputed domain name was resolved to an English language website provided by "www.sedo.com" and offering the disputed domain name for sale for USD 10,000 (the "Website").
As at the date of this decision, the disputed domain name is no longer resolved to any website.
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark, 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 submitted in the Respondent's informal Response as follows:
1. Possessing trade mark rights doesn't equate to the right of owning domain names;
2. The Complainant chose not to register the disputed domain name during the priority period for the generic Top-Level Domain ("gTLD") ".shop", which expired on August 29, 2016;
3. On September 26, 2016, the gTLD ".shop" formally entered the public registration period. If the Respondent had not registered the disputed domain name, someone else could have done the same;
4. Since the Respondent has already registered the disputed domain name successfully, the Respondent now has the ownership of the disputed domain name;
5. If the Complainant wants the disputed domain name, the Respondent can transfer it to the Complainant.
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 filed a Chinese language translation of the Complaint, but has requested that the language of the proceeding be English.
The Respondent, having received the Center's communication regarding the language of the proceeding in both Chinese and English, and having received the Complaint in both English and Chinese, did not make any submissions regarding the language of the proceeding.
The informal response was filed by the Respondent in both English and 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 considers that the content of the Website and the filing of the informal response in both English and Chinese demonstrate that the Respondent is conversant in English.
In all the circumstances, the Panel therefore 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 Mark acquired through use and registration.
The disputed domain name comprises the Trade Mark in its entirety and is therefore, excluding the gTLD ".shop" (in accordance with previous UDRP decisions), identical to the Trade Mark.
Accordingly, the first element under paragraph 4(a) of the Policy has been made out.
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 Mark. 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.
Mere registration of a domain name comprising another party's trade mark does not give rise to any rights or legitimate interests in the domain name for the purposes of the Policy.
The Respondent has failed to show that he or she 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 parked and offered for sale for USD 10,000 via the 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, and therefore finds that the requirements of paragraph 4(a)(ii) are met.
C. Registered and Used in Bad Faith
In light of the Respondent's offer to sell the disputed domain name on the Website for a price far in excess of the Respondent's likely out of pocket costs incurred in registering the disputed domain name, the Panel finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(i) of the Policy.
The Panel concludes bad faith is further made out by virtue of the fact the disputed domain name is identical to the Trade Mark, and by virtue of the fact the Respondent received notification of the Complainant's rights in the Trade Mark from the TMCH before the Respondent obtained registration of the disputed domain name. There can be no question the Respondent was aware of the Complainant's rights in its well-known Trade Mark prior to registration of the disputed domain name.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith, and the requirements of paragraph 4(a)(iii) have been made out.
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 <carlsberg.shop> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: April 17, 2017