WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DSM IP Assets B.V. v. Lan Qing Tian

Case No. D2017-2113

1. The Parties

The Complainant is DSM IP Assets B.V. of Heerlen, the Netherlands, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Lan Qing Tian of Chengdu, Sichuan, China.

2. The Domain Name and Registrar

The disputed domain name <dsm.sale> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on October 30, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the following day, 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 November 1, 2017, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding and filed an amended Complaint on November 3, 2017. The Respondent did not comment on 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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on November 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 5, 2017.

The Center appointed Matthew Kennedy as the sole panelist in this matter on December 8, 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 global science-based company active in health, nutrition and materials. "DSM" stands for the English translation of its original name "Dutch State Mines", having originally been established by the Dutch government as a coal mining company. The Complainant is present in many markets, including China, where it has 21 production sites and 39 branches. The Complainant owns trademark registrations for the DSM trademark including International trademark registration number 736523, registered from February 18, 2000, and International trademark registration number 991629, registered from September 22, 2008, both designating multiple jurisdictions, including China, and specifying goods and services in multiple classes. The Complainant has also registered various domain names that it uses in connection with its official websites, including <dsm.com>, registered on July 3, 1997, and <dsm.com.cn> registered on December 23, 1999.

The Respondent is an individual located in China. According to a reverse WhoIs search provided by the Complainant, the Respondent is associated with over 7,000 domain name registrations. The disputed domain name was created on June 5, 2017, and does not resolve to any active website; it is passively held.

As further noted by the Complainant, previous panels in proceedings under the Policy have found that the Respondent registered and was using one or more domain names in bad faith. These proceedings include Pierre Balmain S.A. v. lan qing tian, WIPO Case No. D2016-1796; M Chapoutier v. Lan Qing Tian / Qingtian Lan, WIPO Case No. D2016-1717; and E. Remy Martin & C° v. Lan Qing Tian / Qingtian Lan, WIPO Case No. D2016-1567.

In response to a cease-and-desist letter issued by the Complainant's representative, a reply was sent by email, in English, on September 5, 2017, ostensibly from the registrant of the disputed domain name, stating a willingness to transfer the disputed domain name for a "reasonable price".

5. Parties' Contentions

A. Complainant

The disputed domain name is identical and confusingly similar to the Complainant's DSM trademark. The relevant comparison is between the second-level portion of a disputed domain name and a trademark. The disputed domain name incorporates the Complainant's DSM trademark in its entirety.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use its trademarks in any way, including as a domain name. The Respondent is not commonly known by the disputed domain name. The disputed domain name redirects to a website that resolves to a blank page. The Respondent has failed to make use of this website and has not demonstrated any attempt to do so.

The disputed domain name was registered and is being used in bad faith. The Complainant and its trademark are known internationally, with trademarks registered in multiple jurisdictions including China. It is not plausible to conceive of a situation in which the Respondent would have been unaware of the Complainant's brands at the time that the disputed domain name was registered. Passive holding does not exclude a finding of bad faith use. The Respondent has previously been found to have registered domain names in bad faith in at least five proceedings under the Policy involving 17 domain names, which provides evidence of a pattern of cybersquatting. The Respondent has also registered at least four other domain names that incorporate third-party trademarks.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that "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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that translation of the Complaint would unfairly disadvantage and burden the Complainant as it is unable to communicate in Chinese; the disputed domain name is in Latin characters; and the Respondent sent a response in English to a cease-and-desist letter in English, which proves that the Respondent understands English. The Respondent did not comment on the language request.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint in this proceeding was filed in English. The Parties have engaged in correspondence in English before the commencement of the proceeding, which demonstrates that the Respondent is able to understand and communicate in that language. Moreover, having received notice of the Complaint in Chinese and English, the Respondent has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements:

(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 is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the DSM trademark.

The disputed domain name incorporates the Complainant's DSM trademark in its entirety. The only additional element is the Top-Level Domain ("TLD") suffix ".sale" but a TLD suffix may generally be disregarded in the comparison between a domain name and a trademark for the purposes of assessing confusing similarity. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(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 trademark 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 trademark or service mark at issue.

As regards the first and third circumstances above, the disputed domain name does not resolve to any active website. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services and there is no evidence on the record of any preparations to use it in this way. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

As regards the second circumstance above, the Respondent's name is recorded in the Registrar's WhoIs database as "Lan Qing Tian"; not "DSM" nor any name with the initials "DSM". There is no evidence on the record that the Respondent has been commonly known by the disputed domain name.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that prima facie case because the Respondent did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.

With respect to registration, the Panel observes that the disputed domain name incorporates the Complainant's DSM trademark in its entirety. The Respondent registered the disputed domain name years after the Complainant registered its trademark, including in China where the Respondent is located. The Complainant has a considerable reputation in its DSM trademark, including in China, due to its use of that trademark in connection with its products, including through its official Chinese website at "www.dsm.com.cn". For example, the Complainant is the top search result for "dsm" in the Baidu Internet search engine. The Respondent gives no explanation for its choice of the disputed domain name. The Panel notes that at least five previous panels in proceedings under the Policy have found that the Respondent registered one or more domain names in bad faith and that in many cases the domain name comprised only a trademark and a TLD suffix, as in the present case. The Panel notes that the Respondent registered the disputed domain name and the domain name <gsk.sale> at the same time and that both consist of three-letter acronym trademarks and the TLD suffix ".sale". The Respondent is also the registrant of other domain names that comprise a trademark and a TLD suffix. Therefore, even though "DSM" is an abbreviation of other combinations of three words, the Panel considers it likely that the Respondent was aware of the Complainant and its trademark at the time that it registered the disputed domain name. The Panel finds that the Respondent registered the Complainant's trademark in the disputed domain name in bad faith.

With respect to use, the Respondent makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the Complainant has a considerable reputation in its DSM trademark, including in China, due to its use of that trademark in connection with its products, including through its official Chinese website at "www.dsm.com.cn". The Panel notes that at least five previous panels in proceedings under the Policy have found that the Respondent was using one or more domain names in bad faith and that in many cases the domain name did not resolve to any active website, as in the present case. Given these circumstances, the Panel finds that the Complainant has discharged its burden of demonstrating that the disputed domain name is being used in bad faith. The Respondent failed to rebut that case because it did not respond to the Complaint. While not conclusive, the Panel also notes that, in response to the Complainant's cease-and-desist letter, the Respondent offered to sell the disputed domain name to the Complainant, suggesting that the Respondent's underlying intention may have been to profit from the sale of the disputed domain name to the Complainant.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

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 <dsm.sale> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: December 11, 2017