WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swiss Arabian Perfumes Ind. Ltd. v. Nexperian Holding Limited / Guo YinChun
Case No. D2017-0872
1. The Parties
The Complainant is Swiss Arabian Perfumes Ind. Ltd. of Sharjah, United Arab Emirates, represented by AVID Intellectual Property Registration Agent, United Arab Emirates.
The Respondents are Nexperian Holding Limited of Hangzhou, Zhejiang, China (“the first Respondent”) / Guo YinChun of Chongqing, China (“the second Respondent”), self-represented.
2. The Domain Name and Registrar
The disputed domain name <sapil.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2017. On May 1, 2017, the Center transmitted an email to the Registrar to request for registrar verification in connection with the disputed domain name. On May 3, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. On the same day, the second Respondent submitted an email stating that it had received the Registrar’s notification that a Complaint concerning the disputed domain name <sapil.com> was filed with the Center, however the second Respondent had not received the Center’s official correspondence. The Respondent further stated that it does not understand English and asked for the Complaint to be in Chinese so that the Respondent can reply in Chinese.
The Center sent an email communication to the Complainant on May 10, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center transmitted an email in English and Chinese regarding the language of the proceedings. On May 11, 2017 and May 12, 2017, the second Respondent requested that Chinese be the language of the proceedings and requested an extension to file its response to the Complaint, as there was a bereavement, which required the second Respondent to return to his home town to sort matters out. The Complainant sent an email to enquire about the Respondent’s identity on May 12, 2017 and requested an extension of ten days to submit the amendment to the Complaint on May 13, 2017. The Complainant requested that English be the language of the proceedings on May 23, 2017, and stated by email on May 25, 2017, that it would like the Complaint to be against two Respondents: the first Respondent being the original Respondent Nexperian Holding Limited; and, the second Respondent to be Guo YinChun.
The Center verified that the Complaint together with the amendment to 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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on May 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2017. The second Respondent filed an informal response on May 24, 2017, requested a standard template response in Chinese on May 29, 2017 and filed a formal response in Chinese on June 17, 2017.
The Center appointed Douglas Clark as the sole panelist in this matter on June 26, 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 perfumes manufacturer based in the United Arab Emirates (“UAE”). It is the registered proprietor of the trademark SAPIL for perfumes and other products in a number of jurisdictions, including UAE, European Union, India, Saudi Arabia, Kuwait, Oman, Pakistan, and Qatar. These registrations include European Union trademark registration number 011275451 registered on February 28, 2013. SAPIL is an abbreviation of the Complainant’s name Swiss Arabian Perfumes Ind. Ltd.
The first Respondent is a privacy service. The second Respondent is Guo YinChun who appears to be an individual from Chongqing, China. The second Respondent was shown as the registrant of the disputed domain name on WhoIs searches up to August 2016 before this was changed to the first Respondent. The second Respondent is now listed as the registrant of the disputed domain name.
The disputed domain name <sapil.com> was registered on December 24, 2015. Until recently it resolved to a website “www.ltq.cc” which is a website owned by the second Respondent which contains blog entries.
In 2016, the Complainant instructed lawyers in Shanghai to seek to negotiate with the second Respondent. The lawyers reported that the second Respondent offered to sell the disputed domain name for RMB 100,000 to RMB 150,000. The second Respondent admits being contacted by the Complainant’s Shanghai lawyers but denies ever having offered to sell the disputed domain name for any price.
5. Parties’ Contentions
The Complainant referred to the Respondent in its Complaint without differentiating between the first Respondent and the second Respondent. As noted in Section 3 above, the Complainant requested that the Complaint proceed jointly naming the Respondent as the privacy service and the underlying registrant. This section therefore refers to the Respondent when setting out the Complainant’s contentions.
Identical or confusingly similar
The Complainant contends that the disputed domain name <sapil.com> incorporates its registered trademark SAPIL in whole and is, other than the generic Top-Level Domain (“gTLD”) “.com”, identical to the Complainant’s registered trademark.
No rights or legitimate interests
The Complainant submits that the Respondent is not commonly known by the disputed domain name <sapil.com>, and is not affiliated with the Complainant nor authorized to use any of the Complainant’s trademarks including the use of its domain names. Furthermore, the disputed domain name <sapil.com> is diverted to a website “www.ltq.cc” indicating that the Respondent is not using the disputed domain name for any legitimate use. Also this diversion to another website “www.ltq.cc” where the disputed domain name does not appear is indicative of a lack of content or use on the Respondent’s part.
The Complainant also contends that the Respondent has not made a bona fide offering of goods or services on the disputed domain name and thus shows no rights or legitimate interests in the disputed domain name.
Registered and is being used in bad faith
The Complainant contends that the Respondent is not serious in using the disputed domain name, based on that fact that the disputed domain name is redirected to a website “www.ltq.cc”.
Furthermore, the Complainant alleges that the Respondent seems to be in the habit of purchasing domain names for the sole purpose of reselling them, and that the Respondent engages in bad faith activities in connection with other domain names registered to the Respondent. The Complainant contends that the Respondent knew of the Complainant when registering the disputed domain name. The Complainant contends the Respondent may use the disputed domain name in a way that may give rise to further complaints from dissatisfied customers which could seriously tarnish the Complainant’s name, business and the goodwill it built over 40 years in providing its clients with quality products and services.
The Respondent responded as follows:
Identical or confusingly similar
The Respondent did not challenge that the disputed domain name and the Complainant’s trademark SAPIL are identical or confusingly similar other than to state that the Complainant has no trademark registration for SAPIL in China.
No rights or legitimate interests
The Respondent contends that it acquired the disputed domain name legally through registration and had no intention of reselling the disputed domain name.
The Respondent contends that there is no confusion between the disputed domain name and the Complainant’s trademark SAPIL, as the Respondent plans to register SAPIL as a registered trademark in China in a classification concerning silkworm culture (桑蚕农业) for the Respondent’s business in the future, which is different to the current goods and services offered by the Complainant under the Complainant’s trademarks.
Registration and use in bad faith
The Respondent submits that neither the registration nor the use of the disputed domain name would negatively affect the Complainant’s reputation and business.
The Respondent contends that, as the disputed domain name was registered for its intended silkworm culture business to be launched in the future, there was no bad faith in the registration and use of the disputed domain name.
The Respondent states that it did not approach the Complainant in connection with the selling of the disputed domain name, in fact the Complainant’s lawyer approached it twice with the intention of purchasing the disputed domain name.
Nexperian Holding Limited who was shown in the WhoIs record, as the name of the Registrant of the disputed domain name, has no connection with the second Respondent, as it is a name used by the Registrar for WhIs Privacy Protection services. The second Respondent, therefore, denies the Complainant’s allegations of bad faith activities concerning the registration and use of other domain names stating those were registrations obtained by the first Respondent.
Reverse domain name hijacking
The Respondent requests the Panel to make a finding of reverse domain name hijacking, and contends that the Complainant is abusing the domain name dispute resolution system after the Complainant failed to initially register the disputed domain name and then acquire the disputed domain name through subsequent negotiation with the assistance of its lawyers to purchase the disputed domain name from the Respondent.
6. Discussion and Findings
6.1 Preliminary Issues
(a) Identity of Respondent
It is clear from the record that the second Respondent is the actual registrant of the disputed domain name and that the first Respondent is a privacy service. The Panel will only therefore consider the evidence relating to actions of the second Respondent.
(b) Language of the Proceedings
According to paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings 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 proceedings. The language of the Registration Agreement of the disputed domain name is Chinese.
The Complainant submitted the Complaint in English and requested that the proceedings be held in English. The Respondent replied in Chinese and contended that the proceedings shall be in Chinese. The Parties have not reached an agreement with respect to the language of the present proceedings.
The Respondent alleges that it does not understand English, but after using Google translate to translate each statement of the Complaint, it is able to comprehend a majority of the Complaint and as such filed a Response in Chinese against the Complainant’s contentions. From the response filed, it is clear the Respondent completely understood the Complaint and was able to respond completely.
The Center preliminary decided 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.
The Center’s email communications to both Parties are in English and Chinese.
Taking into account the circumstances of the case, the Panel accepts the Complaint in English and the Response in Chinese.
The Panel will render its decision in English.
6.2 Substantial Issues
The burden for the Complainant under paragraph 4(a) of the Policy is to prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <sapil.com> is other than the gTLD “.com” identical to the Complainant’s trademark SAPIL.
The Panel notes that the Complainant does not have a registered trademark for SAPIL in China. The ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. These factors may however bear on a panel’s further substantive determination under the second and third elements. (See section 1.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Paragraph 4(c) of the Policy sets out how a respondent can prove its rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii) :
(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 contends that SAPIL represents “Sang Ping Li” (“桑坪里” in Chinese Pinyin), and Sang Ping Counter (“桑坪(镇)”) is a place in Chongqing known by its silkworm culture business. According to the Respondent’s explanation, “Sa” is from the first half of “Sang”, and likewise “Pi” is from the first half of “Ping” and “L” is from the first half of “Li”.
The Respondent has not produced any evidence to show any genuine intent to make use of the disputed domain name in this way. It has not produced any trademark applications or registrations, nor has it established a website under the disputed domain name to reflect any intention to use the disputed domain name in this way.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
The second element of the paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel does not consider the evidence filed by the Complainant as sufficient to support a finding the Respondent offered to sell the disputed domain name. This alleged offer therefore does not support a finding of bad faith.
The Panel, nevertheless, finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has registered its trademark SAPIL in many jurisdictions. Search results of the Complainant’s trademark SAPIL in major search engines in China all point to the Complainant’s official websites or product information. The Panel is of the view that it is highly likely the Respondent knew of the Complainant’s trademark before registering the disputed domain name.
This case falls within 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 website or other online 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 fact the disputed domain name resolves to a page with no content related to the Complainant does not preclude a finding that it has been used in bad faith. It is well established that passive use or non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. (WIPO Overview 3.0 section 3.3). SAPIL is effectively an invented word and the use of the disputed domain name to redirect to “www.ltq.cc” can only be to divert business from consumers looking for the Complainant or otherwise suggest some kind of affiliation.
The third element of paragraph 4(a) of the Policy is, therefore, satisfied.
D. Reverse Domain Name Hijacking
Given the above findings, the Panel rejects the Respondent’s allegation of reverse domain name hijacking.
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, <sapil.com>, be transferred to the Complainant.
Date: July 17, 2017