WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tyco International Services GmbH v. Ye Liangfu / Jishi Dunfamenshenzhen Youxiangongsi

Case No. D2017-1329

1. The Parties

Complainant is Tyco International Services GmbH of Schaffhausen, Switzerland, represented by Steven M. Levy, United States of America (“US”).

Respondent is Ye Liangfu, Jishi Dunfamenshenzhen Youxiangongsi of Shenzhen, Guangdong, China / Ye Liangfu of Shanghai, China.

2. The Domain Names and Registrar

The disputed domain names <tycolt.com>, <tycosh.com> and <tycosz.com> are registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”).

3. Procedural History

Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2017. On July 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 13, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On July 19, 2017, Complainant filed an amended Complaint addressing the consolidation of Respondents.

On July 18, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 18, 2017, Complainant confirmed its request that English be the language of the proceeding. On July 27, 2017, Respondent requested for Chinese to be the language of the proceeding.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on July 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2017. Respondent did not submit any response save for its email communications dated July 13, 18 and 27, 2017. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment on August 17, 2017.

The Center appointed Yijun Tian as the sole panelist in this matter on August 24, 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

A. Complainant

Complainant, Tyco International Services GmbH, is a company incorporated in Schaffhausen, Switzerland. Complainant is a market leader in the global infrastructure, fire protection, and security solutions industries with approximately USD 9 billion in annual revenue in these sectors and about 57,000 employees supporting these sectors in more than 900 locations across 50 countries serving various end markets, including commercial, institutional, governmental, retail, industrial, energy, residential and small business.

Complainant has exclusive rights in the TYCO marks. Complainant is the exclusive owner of numerous TYCO trademarks worldwide, including the US trademark registered since May 17, 2005 (the US Trademark registration number 2951967), the European Union (“EU”) trademark registered since July 7, 2006 (the EU registration number 4718763), the Chinese trademark registered since March 14, 2002 (the Chinese registration number 1729948) and International trademark registered since September 28, 2010 (the International trademark registration number 1058764) (Exhibit E to the Complaint). Complainant also owns and operates domain names, which contain TYCO mark in its entirety, such as <tyco.com> and <tyco-fire.com> (Exhibits D1-D2 to the Complaint).

B. Respondent

Respondent is Ye Liangfu, an individual residing in Shanghai, China / Jishi Dunfamenshenzhen Youxiangongsi, Yelianfu, apparently a Chinese company incorporated in Shenzhen, Guangdong, China. The disputed domain names <tycolt.com> and <tycosh.com> were registered on April 10, 2017. The disputed domain name <tycosz.com> was registered on April 14, 2017. The disputed domain names <tycosz.com> and <tycosh.com> currently resolve to websites selling products under Complainant’s trademark and indicate that the website is the official website of Complainant. The disputed domain name <tycolt.com> currently resolve to an inactive website.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain names <tycolt.com>, <tycosh.com> and <tycosz.com> are confusingly similar to Complainant’s TYCO trademarks. The disputed domain name includes TYCO mark in its entirety. The addition of the generic term “sh”, “sz” and “It” at the end of the disputed domain names as well as the generic Top-Level Domain (“gTLD”) “.com” are not sufficient to eliminate the confusion of similarity. The Panel notes that all disputed domain names are held by the registrant “Ye Liangfu”.

Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain names.

Complainant contends that the disputed domain names were registered and are being used in bad faith.

Complainant requests that the disputed domain names be transferred to it.

B. Respondent

Respondent did not formally reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

a) The website of two of the disputed domain names contains an “English” link at the top by which visitors may access an English-language version of the site;

b) The TYCO trademark, in its specific spelling, is a coined term that appears exclusively in the Latin alphabet as used in the English language;

c) Complainant and its affiliates operate their internationally-diverse offices in the English language;

d) In light of the clearly intentional copying of its famous TYCO trademark by Respondent, it would not be fair or equitable to require Complainant to go to the unnecessary time and expense of translating its pleadings into another language; and

e) It is Complainant’s position that Respondent is intentionally seeking to put Complainant to the added work of translating its correspondence into the Chinese language so as to gain leverage in negotiating a sale of the disputed domain names.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding before July 21, 2017. But, on July 27, 2017, it did send an email and object to the use of English as the language of the proceeding stating that the domain name registration agreements for the three disputed domain names are all in Chinese.

Paragraph 11(a) 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 other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be 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). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states:

“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (WIPO Overview 3.0, section 4.5.1; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from Switzerland, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain names include Latin characters (“tyco”, “sz”, “sh” “lt”) and are registered in the gTLD space comprising of the Latin characters “.com” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual/company incorporated in China and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain names <tycolt.com>, <tycosh.com> and <tycosz.com> are registered in Latin characters tyco”, “sz”, “sh” and “lt” respectively, rather than Chinese script; (b) the gTLD of the disputed domain name is “.com” is in Latin characters; (c) the disputed domain names <tycosh.com> and <tycosz.com> resolve to a website which has an English-language version of the site content; (d) Respondent’s responses to the Center’s emails (on July 18, 2017) were written in English; (e) the Center has notified Respondent of the proceeding in both Chinese and English; (f) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Substantial Issues

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy, (paragraphs 4(a) - (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the TYCO marks acquired through registration. The TYCO marks have been registered in China since 2002 and internationally since 2010. The disputed domain names <tycolt.com>, <tycosh.com> and <tycosz.com> comprise the TYCO mark in its entirety. The disputed domain names only differ from Complainant’s trademarks by the suffix “lt”, “sh” or “sz” respectively, and the gTLD suffix “.com” to the TYCO marks. This does not eliminate the identity or at least the confusing similarity between Complainant’s registered trademarks and the disputed domain names. By contrast, it may increase the confusion because “sh” and “sz” appear to be codes relating to the Chinese cities of Shanghai and Shenzhen, and “lt” could be the country code for Lithuania. Internet users may believe these are websites which are authorized by Complainant and targeting consumers in Shanghai, Shenzhen or Lithuania. In relation to the gTLD suffix, WIPO Overview 3.0 further states:

“The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” (WIPO Overview 3.0, section 1.11).

Thus, the Panel finds that disregarding the “lt”, “sz” or “sh” suffix as well as the gTLD suffix “.com”, disputed domain names are identical to the TYCO marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii) 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 Complainant’s trademarks.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).

According to the Complaint, Complainant is a market leader in the global infrastructure, fire protection, and security solutions industries with approximately USD 9 billion in annual revenue in these sectors and about 57,000 employees supporting these sectors in more than 900 locations across 50 countries. Complainant has rights in the TYCO marks since 2002 in China and 2010 internationally, which precede Respondent’s registration of the disputed domain names (2017).

Moreover, Respondent is not an authorized dealer of TYCO-branded products or services but is rather offering competing products for sale on its website. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the term “tyco” in the disputed domain names and in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the TYCO marks or to apply for or use any domain name incorporating the TYCO mark and Respondent has, through the use of a confusingly similar domain names and their webpage contents (particularly the websites resolved by <tycosh.com> and <tycosz.com>), created a likelihood of confusion with the TYCO marks. The disputed domain name <tycolt.com> is currently inactive. Noting also that apparently the websites resolved by <tycosh.com> and <tycosz.com> imply that they are the official websites of Complainant, potential partners and end users are led to believe that the websites at the disputed domain names are either Complainant’s sites or the sites of an official authorized partner of Complainant, which they are not;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain names. Respondent registered the disputed domain names <tycolt.com> and <tycosh.com> on April 10, 2017, and registered the disputed domain name <tycosz.com> on April 14, 2017, long after the TYCO marks became internationally known. The disputed domain names are identical or confusingly similar to Complainant’s TYCO marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported TYCO and other products at the websites resolved by “www.tycosh.com” and “www.tycosz.com”.

The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain names in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the TYCO marks with regard to its products and services. Complainant, founded in 1936, is the leader in sports watches and watches, for running, trail and other sports. Complainant is a market leader in the global infrastructure, fire protection, and security solutions industries with approximately USD 9 billion in annual revenue in these sectors and about 57,000 employees supporting these sectors in more than 900 locations across 50 countries. Complainant has rights in the TYCO marks since 2002 in the US and 2010 internationally. It is not conceivable that Respondent would not have been aware of Complainant’s trademark rights at the time of the registration of the disputed domain names (in 2017) particularly given that Respondent has used Complainant’s marks on its websites.

Thus, the Panel concludes that the disputed domain names were registered in bad faith.

b) Used in Bad Faith

Complainant also has adduced evidence to show that by using the confusingly similar disputed domain names, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other online location”. To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that such intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Given the widespread reputation of the TYCO marks, the confusingly smiliar domain names <tycosz.com> and <tycosh.com>, as well as the inappropriate affiliation statement on the websites resolved by <tycosz.com> and <tycosh.com> (mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with Complainant, contrary to fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s websites. In other words, Respondent has, through the use of a confusingly similar domain names and webpage contents, created a likelihood of confusion with the TYCO marks. Noting also the implication on the websites that they are the official websites of Complainant, potential partners and end users are led to believe that the websites at the disputed domain names <tycosh.com> and <tycosz.com> are either Complainant’s site or sites of official authorized partner(s) of Complainant, which they are not. The Panel therefore concludes that the disputed domain names are being used by Respondent in bad faith.

The disputed domain name <tycolt.com> is inactive. In terms of inactive domain name, the WIPO Overview 3.0 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.” (Section 3.3, WIPO Overview 3.0).

The WIPO Overview 3.0 further states: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” As discussed above, Complainant’s TYCO marks, arguably, are widely known. Taking into account all the circumstances of this case, the Panel concludes that inactive use of the disputed domain name <tycolt.com> by Respondent is in bad faith also.

In summary, Respondent, by choosing to register and use domain names which are confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain names and the conduct of Respondent as far as the websites to which the disputed domain names resolve are indicative of registration and use of the disputed domain names in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <tycolt.com>, <tycosh.com> and <tycosz.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: September 13, 2017